The Design of Hipster

Introduction

The Plaintiff asserted that its hipster whiskey bottle design, which was inspired by the shape of a smartphone and intended to fit into a hip pocket, was novel due to its rectangular shape, smooth rounded shoulders, V-shaped neck, rimmed rounded cap, and dimpled bottom. It argued that these design features were distinctive and visually impactful. However, the Defendant disputed the Plaintiff’s claim of a monopoly over the hipster tag and design features, arguing that “hipster” referred to a person who carried a hip flask during prohibition – a prior art. The Defendant also contended that the claimed design features were common in the liquor trade, and that the dimpled base served a functional purpose of enhancing stability, which could not be legally excluded.

The Court refuted the Plaintiff’s incongruous argument that infringement should be judged solely from the viewpoint of an average consumer, who is ignorant of prior art and judges based on visual impact alone, despite registration and novelty being adjudicated based on the instructed eye. In paragraph 164, the Court provided a clear rationale, consistent with international design infringement standards, for rejecting this argument. The Court held that an average consumer viewing the products from a distance of six to eight yards cannot be entrusted with determining infringement as the threshold for design protection requires novelty compared to prior art. Allowing an average consumer to judge infringement could result in the monopolization of prior art or non-novel aspects of a design.

[Image Sources : Shutterstock]

The differentiation between principles of design infringement and trademark infringement is logical. Trademark law is not intended to encourage creation or production but rather serves as a tool for source identification to benefit consumers who associate distinctive brand identity with goodwill. The policy goal is to prevent confusion and reduce consumer search costs through distinctiveness, protecting investment in goodwill development. Registration or pre-established goodwill and reputation through use is necessary for trademark protection. The first user of a distinctive mark who seeks registration or establishes goodwill receives protection, as this identity distinguishes it from other producers of similar products in the eyes of the average consumer. The focus of whether a mark infringes or not is from the perspective of the average consumer likely to be confused by deceptive similarity. Adjudicating confusion and infringement requires adopting the lens of the target of policy, which is to protect consumers.

In contrast to trademark law, design law is intended to encourage the creation of new and original designs by offering legal incentives in the form of limited market exclusivity. It is not designed to serve as a means of identifying sources or preventing consumer confusion, but rather as a legal tool to incentivize the production of innovative designs. The law recognizes that without such incentives, producers may be less likely to invest in marginal sources of income. The market power of a design is therefore limited to the production of novel and original designs. Only when such designs are registered, does the registrant acquire the right to exclude others. Unlike in trademark law, the average consumer is not expected to be aware of the specific novelty of the design in comparison to prior art. Thus, assuming two designs are infringing solely based on their visual similarities, without consideration of novelty, would be against the specific and limited goal of design law. Even if two designs look similar to the naked eye, they may differ substantially in terms of novelty. If a motion of infringement is granted solely based on deception or free riding, it could potentially result in the monopolization of prior art in the hands of the registrant.

To clarify, the law does provide protection against consumer deception through design imitation. Trade dress protection under trademark law can be extended to protect a product’s appearance, but only if it has acquired secondary meaning in the eyes of consumers, making it distinctive. The court’s decision to reject the average consumer test for design infringement under the Designs Act serves to clearly distinguish between trade dress protection (which aims to prevent consumer deception) and design protection (which aims to encourage novel designs). This ensures that each policy goal is achieved without confusion. In this case, the Plaintiff had not registered its trade dress or established any goodwill associated with its design, so its claim for trade dress protection was dismissed.

Conclusion

According to the Court, design infringement differs from other IP statutes as it requires conscious mens rea in all cases, which is an interesting observation in light of the recent Knit Pro decision where copyright infringement was deemed a cognizable and non-bailable offence. Applying the distinction made in this case, would the police be responsible for determining whether an action constitutes infringement or piracy in the case of copyright law? The implications of this are uncertain. Regardless, the use of piracy as a metaphor in infringement cases (and possibly in all contexts) should be discouraged.

Author: Tanya Saraswat, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing.

References

• https://spicyip.com/2022/12/monopolizing-the-hipster-test-of-design-infringement-by-the-delhi-high-court.html
• https://indiankanoon.org/doc/155053317/