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Beyond Allegations: The Court's Clarity on Design Infringement and Trade Variants

The plaintiff, filed an interim application before the Bombay High Court against the Defendant, seeking temporary injunction, restraining the defendant from infringing their registered design. 


Arguments of the plaintiff: 


The plaintiffs, inter alia, argued that the defendant’s action constitute an infringement of the Plaintiffs registered design. Some of the key arguments put forth by the plaintiffs include:  


  1. Original and novel: The plaintiff claims that the design and configuration of their design is novel and original and registered to the plaintiff.  

  2. Definition of a design: The plaintiff averred that their design satisfies all the requirements of the definition of a design, under the designs act and do not require any artistic element or virtue. 

  3. Original design: The plaintiff submitted that they are the first in the market to use the design and the same has been identified by the consumers for its unique shape and design. The plaintiff argued that by this fact, their design fall under the condition of an original design as per the section 2 (g) of the Designs Act. 

  4. Infringement of their design: According to the plaintiffs, the defendant’s impugned design was an obvious imitation of their registered design and the same constitutes an infringement of the design registered to the plaintiffs. 


Argument of the defendant: 


The defendant, inter alia, argued as follows: 

  1. Disentitled from protection: The defended contented that the plaintiffs design is disentitled from protection under section 19 (e) of the Designs Act because it is not a design under section 2 (d) as it does not appeal to the eye. 

  2. Artistic and common design: The defendants asserted that the article in question must be unique or novel or original in regard to the elements such as shape, configuration, pattern, ornament and should have a visual aesthetic appeal. The defendants submitted that a visual aesthetic appeal is not to be confused with artistic appeal.  

  3. Prior publication: The defendants pointed out that the plaintiffs filed a patent application disclosing the design of the suit article Prior to the date of filing of design application.  

  4. Mere Trade variant: The defendants the suit design is disentitled from protection under Section 19(1) (c) of the Designs Act because it is not a new or original design and is at best a mere trade variant of an existing and known designs which does not qualify for protection under the Designs Act. 


Judgement: 


The court opined that the Prior art publications are not similar to plaintiff’s design and the Patent application was confidential until publication, with respect to the section 11 A of the Patents Act. Additionally, the design represented in the said patent application does not display the look and feel of the design as represented in the design registration. 


The court viewed that the Mosaicing (i.e., breaking down into pieces from different articles and comparing them with the suit design) is not permissible. Further it is not a requirement of the law that infringement in respect of a design that every single aspect must be entirely newly concocted and unknown to the history of mankind. If that were so, no new or original design would exist at all. 


The court opined the Section 4(c) of the Patents Act, that is combination of known designs is only for known articles and not for parts and any know parts can be combined to form a new design for new application. 


The court opined that the trade variant of a prior art would be decided upon three factors as listed below: 


  1. the nature and size of the article to which the design has to be applied,  

  2. the utilitarian nature of the article, 

  3. 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. 


and if the differences between the suit article and the prior arts submitted is minor and inconsequential it would be considered as trade variant of the prior art. 


According to the court, the differences between the suit article and the articles submitted by the defendants are not minor and inconsequential. Moreover, none of the articles listed by the defendants are similar or identical to the suit article. 


The court opined that the design of the suit article is new and novel, established by the fact that the defendant in the same field of business had not been able to make a similar product of the suit design and passed interim injunction against the defendant. 


Conclusion: 


The court's decision in this case underscores the differences between a mere trade variant and a novel design, particularly in design infringement suits. The ruling emphasizes that to establish a credible challenge for a design as a mere trade variant. It is important to produce the prior art exactly same or similar on which a minor or inconsequential change is visible to the naked eyes. The court will not accept mere allegations without supporting evidence. 

 

In The High Court Of Judicature At Bombay 

Ordinary Original Civil Jurisdiction 

I. A. (L) No.13706 Of 2024 

                   In 

Commercial IP Suit (L) No.13638 Of 2024 

Pidilite Industries Limited ...Applicant/Plaintiffs 

V/s 

Astral Limited (Formerly known as Resinova Chemie Limited) ...Respondents/Defendants 

 

Order Dated: 13th June 2024 

 

 

Authors: 

 

Ms. Mahua Roy Chowdhury 

Managing Partner 

 

Mr. Muthu Pandi 

Partner [Patent] 

 

Mr. K. Srivignesh  

Associate [Patent]  

 

Contact us:  Website:  

L: +91 22 28313243 www.royzz.com     

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