Pidilite’s M-Seal Container Cannot Be Termed As Trade Variant: Bombay HC Grants Ad Interim Injunction Against Astral Limited

The Bench of Justice Firdosh P. Pooniwalla observed, “Further, the differences in the features of the Plaintiff’s registered design and the other designs cited can, in my view, not be termed as minor or inconsequential, and given the nature of the product involved, namely a container, the Plaintiff’s registered design cannot be termed as a trade variant…Further, the fact that the Plaintiff’s registered design is new novel and original is also established by the fact that the Defendant, who has been in the same trade, has not manufactured a container with the same or even remotely same design as that of the Plaintiff’s registered design till 30th November 2023.”

Senior Advocate Virag Tulzapurkar appeared for the Plaintiff and Senior Advocate Ashish Kamat for the Defendant.

The Plaintiff has been carrying on business in the field of construction bonding chemicals/ materials 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. The Plaintiff uses distinctive labels upon and in relation to its ‘M-SEAL PV SEAL’ products.

In 2024, the Plaintiff came across a range of solvent cement products manufactured and/or marketed and/or sold by the Defendant under the brand/mark ‘SOLVOBOND’, being sold in containers which, allegedly, were an imitation and were deceptively similar to the distinctive 'M-SEAL PV SEAL' container of the Plaintiff. Hence, the Plaintiff filed the present application seeking an ad-interim injunction.

The Defendant submitted that the Plaintiff’s design does not appeal to the eye and therefore, is not a design under Section 2(d) of the Designs Act. 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 highlighted that the Defendant had sought to dissect the Plaintiff’s container into parts and had sought to compare individual elements and features of the Plaintiff’s container with other designs, patents and products, which was not permissible. The Plaintiff’s design had to be looked as a whole and cannot be segregated, or dissected into separate integers. The test of “appeal to the eye” had to be considered for the design as a whole, the Court said.

The Court placed its reliance on Frito-Lay North America Inc. vs. Balaji Wafers Pvt. Ltd. (2020 Bom)and noted, “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 (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/substantial enough to make the design new/novel and unique. A change made in an already available design may be trivial when considered from the standpoint of some articles but may, on the other hand, be substantial in the case of some others.”

The Court also said that the submission of the Defendant that the suit design is disentitled from protection under Section 19(c) of the Designs Act because it is not a new and original design and is a mere trade variant of existing/known design cannot be accepted and the Defendant has 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.

Accordingly, the Court observed that if the injunction 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. Hence, the Court allowed the relief sought by the Plaintiff.

Cause Title: Pidilite Industries Limited v. Astral Limited (Neutral Citation: 2024: BHC-OS:8629)

Appearances:

Plaintiff: Senior Advocate Virag Tulzapurkar, Advocates Hiren Kamo, Nishad Nadkarni, Aasif Navodia, Khushboo Jhunjhunwala, Rakshita Singh and Jaanvi Chopra.

Defendant: Senior Advocate Ashish Kamat, Advocates Rashmin Khandekar, C. A Brijesh, Aditya Mahadevia, Krishna Gambhir, Karan Khiani, Rashmi Singh and Karan Khiani.

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