Bombay High Court Provides Ad Interim Relief To Pidilite In Infringement Suit Against Astral Product Design

Bombay High Court Provides Ad Interim Relief To Pidilite In Infringement Suit Against Astral Product Design

Warns the defendant from manufacturing, selling, or dealing in any products that are pirated or infringed on the plaintiff's design

The Bombay High Court has granted ad interim injunction in favour of Pidilite Industries Limited and restrained Astral Limited from infringing the registered design of Coex plastic containers of M-Seal PV Seal products.

The bench of Justice Firdosh Pooniwalla stated, “The plaintiff has made out a prima facie case for grant of ad-interim relief in terms of prayer of the interim application. If the injunction is not granted, a grave loss, harm and prejudice would be caused to it, as the defendant would continue to use the impugned container with the design of the plaintiff.”

Since 2015, Pidlite has sold its M-Seal PV Seal products in distinctive containers. Packaged in tin containers initially, in 2018, the company transitioned to Coex plastic containers, for which it sought design registration.

The firm alleged that Astral infringed on its registered designs and engaged in passing off by manufacturing and selling solvent cement with a brand named ‘Solvobond’ in containers that were deceptively like Pidilite. This included the shape, configuration, and caps comprising vertical lines, extended ridges and multiple grooves below the cap connecting the container’s seal. It added that the consumers could get confused due to the similarity.

To this, Astral made no contention of its design being different or an imitation of Pidilite's item.

The Court found that Astral's container was identical to the plaintiff’s product.

Astral further stated that the plaintiff's design could not be protected as it was visually unappealing as per Section 2(d) of the Designs Act, 2000, and had no novelty. It was merely an existing design’s variant.

The Court ruled, “The design of the container of the plaintiff appeals to the eye. When considered as a whole, it is distinctive. The cap contains a pattern of vertical lines and elongated ridges around the outer surface and multiple grooves below the cap connecting to the seal. The container has a distinctive ring, and the edge of the bottle has an inimitable design. The edges at the shoulder and bottom of the container are unique. All these ingredients are appealing.”

While rejecting the submission of the defendant, the judge stated, “At this ad-interim stage, I am not considering whether for Section 19(1) (b) of the Designs Act, the prior art published has to be identical to the plaintiff's design. As a whole, they are neither deceptively similar nor identical to the plaintiff's design. They are substantially different.”

The bench deemed the defendant's comparison of the cap and the body rather than the entire container as inappropriate.

It stated, “The plaintiff's design has to be looked at as a whole and cannot be segregated and dissected into separate integers. The ‘appeal to the eye’ must be considered for the entire design.”

The defendant argued that the plaintiff's design was disclosed in a prior patent application, not making it novel.

However, the judge noted that the patent application, filed before the design application, was not published until after the design application date, making it confidential and not constituting prior publication under Section 11A of the Patents Act, 1970.

The Court rejected the defendant's argument, as it failed to show any prior design similar to the plaintiff's.

Justice Pooniwala cited three factors to determine if an article's design was a trade variant - the nature and size of the article, its utilitarian nature, and whether only minor changes were possible, which may be substantial enough to render the design exclusive.

The bench observed that the plaintiff's container design was not significantly like any known designs or combinations. The features were substantially different and not minor or inconsequential. The defendant, being in the same trade, had not produced a container with a similar design until recently, supporting the originality of the plaintiff's design.

Thus, the Court granted ad interim relief to the plaintiff to prevent the defendant from infringing on the plaintiff's registered design.