In a recent design infringement case brought before the Bombay High Court, the Court has granted an ad interim injunction in favour of the Plaintiff, Pidilite Industries Limited, restraining the Defendant, Astral Limited, from selling its 'Solvobond' cement products in containers identical/similar to the plaintiff's registered M-SEAL PV SEAL containers.
The plaintiff contended that the defendant has flagrantly copied its registered design of Coex plastic containers of M-SEAL PV SEAL products and is deceiving the public at large by passing off its solvent cement products in containers identical to the container design of the plaintiff.
In granting an ad interim injunction to the plaintiff, the Court noted that the plaintiff's registered design is not just a trade variant but a unique and original work of art that ought to be shielded from infringement and passing off by the defendant.
Brief Facts
The plaintiff was incorporated in 1969 and is a manufacturer of construction bonding chemicals/materials and additives and offers a wide range of sealants and adhesives under its 'PV SEAL' brand, which is a pipe glue and a chemical compound/adhesive used for joining/fusing various kinds of plastic pipes. Since 2015, the plaintiff's M-SEAL PV SEAL products bearing distinctive PV SEAL labels are sold openly, extensively, continuously, and in an uninterrupted manner in distinctive tin containers having unique and distinctive shapes, sizes, contours and configurations. In 2018, the plaintiff transitioned from tin containers to Coex plastic containers for its solvent cement products sold under the mark M-SEAL PV SEAL, which was introduced in the market in 2019, while the tin containers were slowly phased out, such that since 2023, only the Coex tin containers are being used by the plaintiff.
In this background, the main issue arose when, in or about 2024, the plaintiff came across a range of solvent cement products manufactured and/or sold by the defendant under its brand/mark 'SOLVOBOND' in containers which, allegedly, were an imitation of or deceptively similar to the plaintiff's distinctive 'M-SEAL PV SEAL' registered design container in shape, configuration, caps including vertical lines and extended ridges thereon and multiple grooves below the cap connecting to the seal of the container.
Plaintiff's Submissions
The plaintiff submitted that the defendant's impugned container was an obvious imitation of its registered container design and given the identical similarity between the rival designs and in the absence of a plausible explanation by the defendant for how it chanced upon/adopted the impugned container design, an order of injunction must ensue. Additionally, it was claimed that the defendant purposefully opted to replicate the plaintiff's design even though it had its own designs. The Court was presented with physical samples of both Plaintiff's and Defendant's containers and found that they were, in fact, largely identical.
The plaintiff asserted that its container design was prior and registered and that the design's novelty and originality resided in its overall shape and configuration, which created a visually appealing and distinctive design when viewed as a whole. Also, it was the first in the market to use the distinctive M-SEAL PV SEAL design on a plastic container for solvent cement products, which appealed to the eye. Also, it is not a mere trade variant as none of the prior art produced by the defendant in its reply is anywhere close/similar to the plaintiff's distinctive M-SEAL PV SEAL container design. It was also submitted by the plaintiff that 'mosaicing' is not permissible, and while comparing the designs of containers, the same cannot be broken down into parts, which the defendant has sought to do in this case by comparing individual elements/features of the plaintiff's containers with other prior designs/patents/products.
Defendant's Submissions
The defendant did not try to defend itself against the plaintiff's contention regarding the similarity between the rival containers but rather argued against the enforceability of the plaintiff's registered container design, submitting that it was not 'visually appealing' as per requirements of Section 2(d) of Designs Act, 2000 and only a mere trade variant of already known and prior published trade designs. The defendant also contended that there was 'nothing unusual' or 'capricious' or 'catchy' about the plaintiff's container design and additionally argued that the plaintiff's design application being, subsequent to its Patent Application for the container design, lacked novelty.
Court's Decision
Based on the above, the Court concluded that the plaintiff's container design is both distinctive and visually appealing when considered as a whole. The Court observed, "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." The Court also relied on sub-section (1) of Section 11 (A) of the Patents Act, 1970, read with Rule 24 of Patent Rules, 2000 and Section 16 of Designs Act, 2000 and noted that filing of the Plaintiff's Patent Application before its Design Application is inconsequential as the design remained confidential and didn't constitute prior publication.
The Court further dismissed the argument of the defendant that the plaintiff's design was not new and original and submitted that the plaintiff's design is validly registered and not a trade variant of existing/known designs and, in fact, the defendant had failed to demonstrate that there is any prior design or one very similar to it that precedes the plaintiff's design or that the plaintiff has merely created a trade variant. The Court noted that the plaintiff's design cannot be segregated or dissected into separate integers. The test of 'appeal to the eye' has to be considered for the design as a whole, and the prior art and prior publications produced by the defendant, when compared as a whole, are neither deceptively similar nor identical to the plaintiff's design as applied to its containers.
In this, the Court placed its reliance on Frito-Lay North America Inc. vs. Balaji Wafers Pvt. Ltd. (2020 Bom) and noted that a bare perusal of the cited designs and the plaintiff's registered design would show that they are, in fact, substantially dissimilar. The features of the plaintiff's design taken together or as a whole are not present in any of the prior cited designs. For a design to be a trade variant, this Court would have to conclude that the unique features of the plaintiff's design are minor or inconsequential in nature, which is not the case.
The Court concluded that a prima facie case of design infringement had been made out by the plaintiff against the defendant, whose design elements did not constitute substantial variations and were, in fact, similar to the plaintiff's registered design container. It also noted that if the injunction is not granted, then grave loss, harm, and prejudice will be caused to the plaintiff as the defendant will continue to use the impugned container with the plaintiff's design. Hence, in granting interim relief to the plaintiff, the Court has laid down the importance of safeguarding creative designs in business.
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