On the recent decision dt. June 13, by the Bombay High Court in Pidilite Limited v. Astral Industries, we are pleased to bring to you this post by SpicyIP intern Aarav Gupta, discussing the Court’s finding on mosaicing and highlighting the lack of three factor assessment for interim injunctions. Aarav is a third-year law student at National Law University, Delhi. He is passionate about geopolitics, foreign policy, international trade, and intellectual property and spends his time reading and watching sports. His previous posts can be accessed here.
Some Thoughts on the Bombay High Court Order in Pidilite v. Astral Design Infringement Case
By Aarav Gupta
The High Court of Bombay issued an ad-interim injunction in the design infringement complaint filed by Pidilite Industries Limited (“Pidilite”) against Astral Limited, on the 13th of June, 2024. Pidilite, a company specializing in construction bonding chemicals, introduced its distinctive M-SEAL PV SEAL containers in tin in 2015, before switching to Coex plastic in 2019. Pidilite claimed that Astral’s SOLVOBOND containers copied their unique design, including shape, configuration, and specific cap features.
This post discusses the varying views taken by different high courts on the tests for assessing competing designs and mosaicing in the Designs Act, how it differs from the similar concept under the Patents Act. Furthermore, we examine how the court once again fails to demonstrate appropriate justifications for granting an interim injunction.
Brief Background
Pidilite argued that their registered design was novel and visually distinctive. Astral did not dispute the similarity between the designs but challenged the protectability of Pidilite’s design. They claimed it wasn’t visually appealing, was a common trade variant, and lacked novelty due to prior similar designs and Pidilite’s own earlier patent application.
The Court rejected Astral’s arguments, affirming that Pidilite’s design was distinctive and unique. It found Astral’s design nearly identical to Pidilite’s, with minor differences not constituting significant variations. The Court confirmed that Pidilite’s design was validly registered and not a mere trade variant. It noted that combining known design features can still result in a novel design and found substantial differences between Pidilite’s design and those cited by Astral. Additionally, it ruled that Pidilite’s patent application was irrelevant since it was published after the design filing.
The Court concluded that Pidilite had a strong case for design infringement, with the balance of convenience in its favour. Denying the injunction would harm Pidilite’s business, so the Court granted an interim injunction preventing Astral from using the infringing design during the suit.
How are Competing Designs Assessed?
In accordance with the Designs Act of 2000, ‘Design’ refers to aspects of shape, configuration, pattern, ornamentation, or composition of lines or colours given to a product by an industrial process that appeal to and are assessed exclusively by sight. Thus, in circumstances where design infringement is asserted, the standard of ‘judging only by the sight’ is critical. In the case of Videocon Industries Ltd vs. Whirlpool of India Ltd, the Court ruled that a certain form or configuration generated on any object with eye-catching characteristics once registered as a ‘design’, cannot be duplicated. In the present case, the Court also cites the Delhi High Court ruling in TTK Prestige Limited, which notes that “while ocular appeal is the ultimate test of a valid design, what appeals to one person may seem strange to another. The corollary would be that the Court should not apply its own subjective standards when assessing a design’s ocular attractiveness.” The Court reaffirms this understanding and applies it in the present case.
The Issue Of Mosaicing – Applicable To Designs?
The interesting issue, in this case, is the reasoning given on the usage of mosaicing. While the jurisprudence is much clear on the usage of mosaicing in patents (refer to the post by Kartikey Tondon here), the Court went on to specify that it is a rule that “mosaicing” of the prior art, That is, combining features from multiple prior art publications is not allowed when determining the novelty of an invention. Mosaicing is not a defence to a case of design infringement. It involves rearranging known numbers or combinations. In the Pidilite case, the Court said it may apply if the claim is to have a very identical bottle with a comparable form, arrangement, and decoration but only relocated the ornamentation horizontally rather than vertically and did little more. But, that’s not the situation here. In another Delhi High Court decision, Diago Brands Vs Great Galleon Ventures Limited, it was determined that mosaicing is prohibited for designs to be replicated under Section 4(c) of the Design Act. It went on to say that it merely implies that the word “Novelty” used in the Design Act 2000 should be read differently than the term “Novelty” used in the Patent Act 1970. It is said that this is clear since the scope of the Design Act of 2000 and the Patent Act of 1970 differs significantly. The approach of both the courts seems different as the Bombay High Court laid down a situation under which mosaicing in the Designs Act, 2000 may be applicable, but the Delhi High Court remained silent on any such applicability. The lack of substantial judgements on the issue makes it an interesting issue to ponder upon.
What this 47-page order fails to provide, is a reasoned basis for granting an interim injunction (yet again?). The three-part criteria for granting interim relief, which includes showing (i) a prima facie case, (ii) a balance of convenience, and (iii) irreparable loss or injury, is well established. However, the court categorically upholds that the three-fold test should not be applied arbitrarily, to the prejudice of the opposing party and, frequently to the detriment of the public. When awarding interim relief, the Court must offer clear reasons and explain how the three-fold standard is met. A mere copy of pleadings and precedents before the court is insufficient. The court must explain how the criteria are met and how the precedents referenced apply to the specific facts of the case. The court in this case failed to do so. What we can hope for, is that this trend of not providing reasons change, as also highlighted in my last post. It is a dangerous precedent that needs to be changed.
