United Spirits Limited (“USL”), the flagship of UB Group, has obtained an ex-parte ad interim injunction in a civil suit filed in July against a design infringer who was not only pirating the registered design of USL but also reusing second hand bottles of USL and selling its own liquor
One of the highest selling and known brand in the market, McDowell’s No.1 Whisky has a registered design on the shape of the bottle, which is a flagship whisky brand of the UB group. Under the provisions of the Design Act 2000, USL proved prima facie that the bottle in use by the infringer Oasis Distilleries Limited & others was a complete act of infringement of design right and hence have been restrained from infringing the USL’s registered design or/and any bottle which is deceptively similar to the USL’s registered design bottle, by using their bottles in the market in any form.
Anuj Gupta, Co Founding Partner, at the Law Firm ANM Global Inc, who represented the World’s Largest Liquor Company (by volume) said, Design right registration confers upon the Plaintiff all the statutory privileges including the right of exclusive use of the same. The Defendants use of a bottle to sell its liquor that is an obvious imitation of the registered designed bottle of the Plaintiff is in gross violation of the statutory rights of the Plaintiff. The Defendants use of the infringing design is without license or authorization of the Plaintiff and thus takes unfair advantage of and is detrimental to Plaintiff’s exclusive right to use its registered design and consequently, constitutes infringement within the meaning of Section 22 of the Designs Act, 2000.
Mr Gupta also added that the use by the Defendants of a deceptively similar bottle for selling its liquor takes unfair advantage of and is detrimental to and/or dilutive of the distinctive character and repute of trademark bottle of the Plaintiff. Unless restrained, the sale of the defendant’s liquor in bottles deceptively similar/identical and/or used bottles is bound to whittle down the source identifying function of the Plaintiff’s trademark bottle, thus leading to its ultimate demise. Ergo, its trademark would get diluted and its distinctive character and repute would get blurred.
Nidhish Mehrotra Co Founding Partner at Law Firm ANM Global Inc, added that apart from the above losses and injury, the Plaintiff has suffered loss by way of dilution to their goodwill and the loss of profits, which are likely to be substantial.