Summary: The Bombay High Court recently held that visual appeal is the ultimate test of a valid design, and that combining old integers into a form that creates a different visual appeal than its parts is also capable of qualifying as a design that is new and original.
Being a word that is used in everyday language, the term “design” can pose many kinds of interpretive challenges in law, not least surrounding its meaning. The first question that logically arises is, what sort of a “design” is entitled to protection under the law? This was the precise question that came up before the Bombay High Court recently, while granting an interim injunction in a design infringement suit filed by Pidilite Industries Limited (“Pidilite”) against Astral Limited (“Astral”).
Background
The definition of “design” in Section 2(d) of the Designs Act, 2000 (“the Act”), lists the critical identifier that a design is something that “appeal[s] to and [is] judged solely by the eye”. Thus, visual appeal is a significant aspect of what entitles something to be deemed a design that is capable of registration and protection under the law.
In its order dated 13 June 2024 in Pidilite Industries Limited vs. Astral Limited (Formerly known as Resinova Chemie Limited) (IA (L) No.13706 of 2024 in Comm IP (L) No.13638 Of 2024), a single judge bench reaffirmed that ocular appeal is the ultimate test of a valid design. The order also discussed further nuances of design law, including the criteria for determining the visual appeal of a design and assessing the novelty of designs.
Significantly, the Court also said that if two old or known integers are combined in a new way, which results in a design that, as a whole, is different, the design would create a different appeal to the eye and would qualify as a design that is new and original.
Facts
Pidilite, a company carrying out business in the field of construction bonding chemicals and related products, filed an infringement suit against Astral Limited for infringement of its registered design no. 310662, titled “Solvent Cement Pack”.
Registered design no. 310662
Pidilite claimed that its distinctive M-SEAL PV SEAL containers, originally introduced in tin in 2015 and later transitioned to Coex plastic in 2019, had been copied by Astral's SOLVOBOND containers. Pidilite argued that Astral's containers were deceptively similar to its own, including features such as shape, configuration, caps with vertical lines and ridges, and grooves below the cap.
While Astral did not contest the similarity of its container design as against Pidilite's design, it argued that Pidilite's design was invalid on various grounds, as follows:
- The design is not visually appealing and thus, does not meet the definition of design under Section 2(d) of the Act, and is accordingly disentitled from protection under Section 19(1)(e) of the Act;
- The design was published before the date of registration and hence, also disentitled from protection under Section 19(1)(b) of the Act. Pidilite's prior patent application also negated the novelty of its design.
- The design is not a new or original design, and a mere trade variant of existing designs, and hence disentitled from protection under Section 19(1)(c) of the Act.
The Court was presented with physical samples of both Pidilite's and Astral's containers, and found that they were largely identical, and proceeded to consider the defences raised by Astral to decide the application for interim injunction.
Key issues and findings
1.Whether the design “appeals to the eye”?
Astral argued that there was nothing in Pidilite's container that “appeals to the eye.” Relying on Jayson Industries and Anr. Vs. Crown Craft (India) Pvt. Ltd. (IA 13422 of 2022 and 13425/2022 in CS (COMM) 580/2022), Astral asserted that there should be something “catchy” or “capricious” about the design in question, and that the design must not be “commonplace” or such, which does not evoke any visual appeal whatsoever.
However, the Court rejected this argument, and held that held that the design must appeal to the eye as a whole. It also said that a Court must apply an objective test, rather than its own subjective standards, when assessing ocular appeal of a design.
In arriving at its decision, the Court referred to TTK Prestige Limited v. KCM Appliances Private Limited (2023 SCC Online Del 2129) and Kemp & Co. Vs. Prima Plastics Limited (1998 SCC Online Bom 437). In the Court's opinion, Pidilite's design, when viewed as a whole, was 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, as well as multiple 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. According to the Court, all these ingredients, taken together, appeal to the eye.
2.When assessing the novelty of a design, can individual parts of the article be compared with prior art?
To prove that the registered design is not novel or original, Astral had dissected Pidilite's container into parts and compared the cap and bottle of Pidilite's container separately with only the caps or body of the containers without a cap, known in the prior art.
The Court held that mosaicing or breaking down pieces from different articles and comparing them with the suit design is not permissible. It said that Pidilite's design has to be looked at as a whole and cannot be segregated or dissected into separate integers. Hence, even if some integers of a design were a part of a previously known article, its use in the specified manner to yield a novel article is not forbidden. This article taken as a whole would constitute a new design.
3.Would a prior filed patent application amount to prior disclosure of the design?
The Court noted that the patent application in question was made on 20 September 2018, and was published only on 3 April 2020, i.e. after the design application was filed on 5 October 2018. Relying on Section 11A of the Patents Act, 1970, the Court held that the patent application, although prior filed, was confidential and not known to public on the date of filing of design application.
The Court also noted that there is no question of prior publication of Pidilite's container in the patent application as it does not display the look and feel of the container as it would appeal to the eye, i.e., as visually seen by the eye and as represented in the design registration.
4.Whether the design is a mere trade variant of an existing or known design?
The Court in view of Frito-Lay North America Inc. vs. Balaji Wafers Pvt. Ltd. (2020 SCC Online Bom 2375) noted that whether or not a particular article or its design is a trade variant is based on three factors, namely:
(i) the nature and size of the article to which the design has to be applied,
(ii) the utilitarian nature of the article, and
(iii) if the article's nature or size is such that only minor or small changes may be possible to be made, such minor or small changes may be sufficient or substantial enough to make the design new or novel unique.
The Court assessed the cited designs and noted that the features of Pidilite's design taken together or as a whole were not present in any of the prior cited designs. Further, the Court noted that differences in the features of the Pidilite's registered design and the other cited designs were not minor or inconsequential. In view of this and given the nature of the product involved, i.e., a container, the Court held that Pidilite's registered design could not be termed a trade variant.
Finally, the Court held that Pidilite had made out a prima facie case of design infringement, that the balance of convenience was also in its favor, and that not granting the injunction would cause irreparable harm to its business. Therefore, the Court granted an interim injunction in favor of Pidilite, restraining Astral from manufacturing, selling, or dealing in any products that infringe upon Pidilite's registered design during the pendency of the suit.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.