Bombay High Court Grants Temporary Injunction In Favor Of Pidilite In Infringement Suit For Cement Container Design

The Bombay High Court recently granted ad interim injunction in favour of Pidilite Industries Limited (Pidilite) restraining Astral Limited (Astral) from infringing Pidilite's registered design of Coex plastic containers of its M-SEAL PV SEAL products. Justice Firdosh Pooniwalla held, “the Plaintiff has made out a prima facie case for grant of ad-interim reliefs in terms of prayer (a) of the Interim Application. If the injunction as sought in prayer (a) is not granted, then grave loss, harm and prejudice would be caused to the Plaintiff as the Defendant would then continue to use the impugned container with the design of the Plaintiff”BackgroundPidilite claimed that Since 2015, it has sold its M-SEAL PV SEAL products in distinctive containers. Initially, these products were packaged in tin containers, but in 2018, Pidilite transitioned to Coex plastic containers, for which it sought design registration.Pidilite alleged that Astral Limited had infringed on its registered designs and engaged in passing off by manufacturing and selling solvent cement with brand/mark SOLVOBOND in containers that were deceptively similar to those of Pidilite. Pidilite claimed that this similarity was likely to cause confusion among consumers.Pidilite contended that Astral's product used containers that were deceptively similar to Pidilite's registered design for the M-SEAL PV SEAL containers, including identical shape, configuration, caps including vertical lines and extended ridges thereon and multiple grooves below the cap connecting to the seal of the container.Astral Limited did not contend that its design was different and not an imitation of Pidilite's product. The court examined the containers of both the parties and found that the Defendant's container is almost identical to that of the Plaintiff. Rather, Astral contended that the plaintiff's design could not be protected as it was not visually appealing as per Section 2(d) of the Designs Act and that it was not novel, and a mere trade variant of prior existing designs.The court found that the design elements of the plaintiff's containers contributed to the overall visual appeal of the containers, which is protected under design law.“the design of the container of the Plaintiff does appeal to the eye. The Plaintiff's design when considered as a whole is distinctive and unique and has an appeal to the eye. The cap contains a unique pattern of vertical lines and elongated ridges around the outer surface and multiples grooves below the cap connecting to the seal. The container has a distinctive unique ring. The edge of the bottle has a unique design. There are unique edges at the shoulder and bottom of the container. All these ingredients taken together do appeal to the eye.”Thus, the court rejected submission of the Defendant that the suit design is disentitled from protection under Section 19 (1)(b) of the Act because it has been published in India or any other country prior to the date of registration.“At this ad-interim stage, I am not going into the question as to whether, for the purposes of Section 19(1) (b) of the Designs Act, the prior art published has to be similar or identical to the Plaintiff's design as, is in my view, the prior art and prior publications produced by the Defendant when seen as a whole, are neither deceptively similar nor identical to the Plaintiff's design. They are substantially different from the Plaintiff's design as applied to the Plaintiff's container”, the court added.The court deemed the defendant's comparison of isolated parts (caps or body) rather than the entire container as inappropriate and said that the design must be viewed as a whole. “The Plaintiff's design has to be looked as a whole and cannot be segregated, dissected into separate integers. The test of “appeal to the eye” has to be considered for the design as a whole.”The court emphasized that combining known elements in a new way can result in a design that is novel and original.The defendant argued that the plaintiff's design was disclosed in a prior patent application, making it not novel. However, the court 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.The court rejected the Defendant's argument that the Plaintiff's container design is a mere trade variant of a known design and cannot be protected under Section 19(1) (c) of the Designs Act. The court found this argument to be incorrect as the Defendant failed to show any prior design similar to the Plaintiff's design.The court outlined three factors to determine if an article's design is a trade variant: the nature and size of the article, its utilitarian nature, and whether only minor changes are possible, which may still be substantial enough to render the design novel.The court found that the Plaintiff's container design was not...

Bombay High Court Grants Temporary Injunction In Favor Of Pidilite In Infringement Suit For Cement Container Design

Amisha Shrivastava

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