The issue of design registration and its infringement has become increasingly significant with the growth of industries that rely heavily on distinct packaging for branding and consumer recognition. This article delves into the legal nuances of mosaicing in the context of design registration, illustrated through a case involving the Plaintiff's M-SEAL PV SEAL containers and the Defendant's SOLVOBOND containers.

Background:
In 2018, the Plaintiff pioneered the use of Coex plastic containers for its solvent cement products, M-SEAL PV SEAL, transitioning from traditional tin containers. By 2019, these plastic containers were fully integrated into the market, completely replacing tin containers by 2023. In 2024, the Plaintiff accused the Defendant of infringing upon its design rights by marketing solvent cement products in containers under the SOLVOBOND brand, which allegedly mimicked the Plaintiff's container design.

Legal Framework:
The Court's assessment of design infringement hinged on several core principles:

• Ocular Appeal: The design's appeal to the eye as a whole is the definitive test of its validity. The Court emphasized that this assessment must be objective, avoiding subjective biases.
• Whole Article Comparison: The design must be evaluated in its entirety. Isolated comparisons of individual parts, such as caps or body shapes, are impermissible.
• Mosaicing: The practice of breaking down a design into constituent parts and comparing these with elements from other designs is not allowed. A design should be considered as a unique whole, not a patchwork of known designs.
• Prior Art and Publications: Prior art must be substantially similar to the contested design to invalidate it. The filing of a patent application does not equate to prior publication unless it visually discloses the design in a manner recognizable to the eye.

Court's Analysis and Findings:

• Ocular Appeal: The Court found that the Plaintiff's container design appealed to the eye as a whole, fulfilling the requirement for design protection.
• Comparison of Designs: The Defendant's evidence of prior art was not sufficiently similar to the Plaintiff's design. The Court noted substantial differences between the Plaintiff's registered design and the prior art presented by the Defendant.
• Impermissible Comparisons: The Defendant's strategy of comparing individual components (e.g., caps or bottle bodies) in isolation was rejected. The Court maintained that the design must be viewed holistically.
• Mosaicing: The Court reinforced that mosaicing is not a valid defense. The Plaintiff's design was not merely an aggregation of known designs but a distinctive, original creation. Mosaicing cannot be used to dismantle and discredit the uniqueness of a registered design.
• Patent Application: The Court ruled that the Plaintiff's prior patent application did not constitute prior publication. The application did not visually disclose the design in a way that would affect its registration validity.

Accordingly, the Plaintiff was granted the relief of interim injunction against the Defendants.

Implications of the Decision:

• Holistic Design Evaluation: This case underscores the importance of considering the design as an integrated whole rather than dissecting it into parts. This approach protects the unique character of a design against piecemeal challenges.
   
• Objective Standard Application: By applying an objective standard, the Court avoids subjective biases that could undermine the consistency and fairness of design infringement rulings.
• Defense Strategies: Defendants in design infringement cases should focus on presenting prior art that is substantially similar in its entirety to the contested design rather than relying on mosaicing or isolated comparisons.
   
• Patent and Design Distinction: This case clarifies that the mere existence of a patent application does not invalidate a subsequent design registration unless the design is explicitly disclosed in a manner that is visually recognizable.

Conclusion:
The Court's ruling in favor of the Plaintiff reinforces critical principles in design registration and infringement cases. The prohibition of mosaicing and the requirement for holistic evaluation protect the integrity of registered designs. This case sets a precedent that emphasizes the need for objective standards and comprehensive comparison methods in legal assessments of design infringement.

Case Citation: Pidilite Industries Limited Vs Astral Limited: 09.05.2024: Commercial IP Suit No. 13638 of 2024:2024:BHC:OS:8629: Firdosha P.PooniwaliaH.J.

Disclaimer:
Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539