In Pidilite Industries Limited v Astral Limited, the Bombay High Court passed an ad-interim injunction order to stop Astral Limited (Astral) from manufacturing, selling, dealing and offering to sell a ‘container’ infringing a registered design of a container of Pidilite Industries Limited (Pidilite).
Pidilite sued Astral, alleging that Astral’s SOLVOBOND containers infringed on their own registered M-SEAL PV SEAL container design. Pidilite claimed the suit design was novel, original, and recognised by consumers for its unique shape and configuration. Furthermore, Pidilite argued that the similarities between the two products increased the likelihood of consumer confusion and market dilution.
Interestingly, Astral did not even contend the similarity between the two designs but instead raised several defences to oppose Pidilite’s request for interim relief, including questioning the suit design’s validity, contending that it lacked novelty and originality.
The Court observed that Astral’s container was almost identical to that of Pidilite’s suit design. Therefore, the Court considered other defences raised by Astral as follows to decide if Pidilite was entitled to interim reliefs –
1. Design Appeal:
Astral submitted that Pidilite’s suit design lacked visual appeal, with nothing capricious or catchy about the design. However, the Court disagreed, referring to the Delhi High Court ruling in TTK Prestige Ltd v KCM Appliances Private Limited, stating that the test for ocular appeal of a design should be objective, not subjective. From that perspective, Pidilite’s container design was found to be distinctive, unique and visually appealing to the eye, thus deserved protection.
2. Prior Publication and Novelty:
Astral submitted a compilation of prior publications to indicate that there was nothing unique/appealing in the suit design, in addition to noting that Pidilite filed a patent application for the same design a week prior to filing the design application. However, Court observed that prior art and publications when seen as a whole are neither deceptively similar nor identical to the design in question. The Court also ruled that breaking down an article into parts (mosaicing) to compare individual parts with parts of a design is not permissible.
The Court clarified that while a combination of known articles is prohibited under Section 4(c) of the Designs Act, this prohibition does not extend to parts of known articles. Moreover, Pidilite’s prior patent application did not constitute prior publication since it was published much later.
4. Originality and Trade Variant:
Astral argued that minor tweaks and variations in a design are wholly insufficient to qualify as new or novel design and that the difference must be substantial/significant. However, the Court found this argument to be flawed, noting that Astral had not demonstrated any prior design similar to the suit design. Then, the Court moved on to make a very crucial point that will have long-drawn consequences for registering designs; the Court explained that combining known elements/integers in a novel way can create a new, original design that appeals to the eye.
The Court also defined the three factors helpful in determining if a particular article or its design is a trade variant:
- nature and size of the article to which the design has to be applied;
- utilitarian nature of the article; and
- if the article’s nature or size is allows only minor or small changes , such changes may be sufficient/substantial enough to make the design new/novel and unique.
Court accordingly ordered that, features of Pidilite’s container design taken as a whole, was not present in any of prior cited designs, and therefore, the same cannot be termed as a trade variant. Consequently, the Court granted Pidilite ad-interim reliefs, restraining Astral from pirating or infringing Pidilite’s suit design.
This decision underscores the importance of protecting unique and original designs, defining key principles such as the objective test for visual appeal, the impermissibility of mosaicing, and the conditions under which combinations of known designs can be considered novel.