Beyond Design Expiry: The Survival of Shape Trademarks in Reckitt Benckiser v. Godrej

Introduction

With the growth of modern marketing and branding, trademarks are no longer limited to names and logos. Today, the shape, packaging, colors, and overall appearance of a product also play an important role in helping consumers identify a brand. In the fast-moving consumer goods (FMCG) sector especially, customers often recognize products through their packaging without carefully reading the label. This has created a legal conflict between design law, which grants protection only for a limited time, and trademark law, which may continue to protect a mark for an unlimited period if it has gained distinctiveness and public recognition.

The case of Reckitt Benckiser (India) Private Limited v. Godrej Consumer Products Limited ^[1] presented the Calcutta High Court with an important opportunity to address this conflict. The dispute centred around the distinctive “bent-neck” bottle used for Harpic toilet cleaner, a packaging shape long associated with Reckitt Benckiser. The main question before the Court was whether a product shape could still receive trademark protection after the expiry of its design registration under the Designs Act, 2000. While deciding the matter, the Court explained the difference between protection granted for a design and protection granted for a trademark.

Facts of the Case

The Calcutta High Court was approached by Reckitt Benckiser India Pvt. Ltd., the manufacturer of the well-known toilet cleaner Harpic, seeking an injunction against Godrej Consumer Products Limited. The Plaintiff claimed that the Defendant’s newly introduced toilet cleaner product, marketed under the name “Spic,” adopted a bottle shape deceptively similar to the iconic Harpic bottle.

The Plaintiff argued that the Harpic bottle possessed a distinctive ‘bent-neck’ configuration that had become strongly associated with the Harpic brand through extensive use, advertising, and consumer recognition over several years. Moreover, the Plaintiff had previously secured design registration for the bottle shape in 2002 under the Designs Act, 2000. However, the statutory term of protection for the same had expired. Despite this expiry, the Plaintiff claimed that the shape continued to function as a trademark and source identifier deserving protection under the Trade Marks Act, 1999.

According to the Plaintiff, the Defendant’s bottle was a “slavish copy” of the Harpic bottle and was intentionally designed to create confusion among consumers. The Plaintiff alleged infringement of its registered trademark rights as well as passing off. It therefore sought an ad-interim injunction restraining the defendant from manufacturing, marketing, and selling products in the allegedly infringing packaging.

Thereafter, the Defendant opposed the application by contending that once the design registration had expired, the shape entered the public domain and could no longer be exclusively appropriated. The Defendant argued that permitting trademark protection over the same shape would effectively create a perpetual monopoly which is inconsistent with the objectives of design law. The Defendant further submitted that similar bottle shapes were common within the industry and that no exclusive right could subsist over such functional or generic packaging features.

Court’s decision and Analysis

The Court granted an ad-interim injunction in favor of Reckitt Benckiser and restrained the Defendant from using the impugned bottle design for its “Spic” toilet cleaner pending further proceedings. The Court held that the Plaintiff had established a strong prima facie case demonstrating that the Harpic bottle shape had acquired distinctiveness and goodwill in the market.

The Court rejected the argument that expiry of design registration automatically extinguishes trademark protection over the same shape. It observed that the objectives of design law and trademark law are fundamentally different. While design protection rewards novelty and aesthetic innovation for a limited statutory period, trademark law protects symbols or identifiers that distinguish the goods of one trader from another. Therefore, even after expiry of a design registration, a product shape may continue to receive protection if it has acquired secondary meaning and functions as a ‘source identifier’ in the minds of consumers.

The Court noted that the Harpic bottle had achieved substantial market recognition over time. Its bent-neck shape was not merely decorative but had become closely associated with the Plaintiff’s product. Consequently, imitation of such packaging was capable of causing confusion and deception among consumers. The Court described the Defendant’s packaging as substantially similar to the Plaintiff’s bottle and considered the resemblance sufficient to justify interim protection.

Interplay between the Trade Marks Act, 1999 and the Designs Act, 2000

Under the Trade Marks Act, 1999, the Court considered the broad definition of a “mark” contained in Section 2(1)(m), which includes shapes of goods, packaging, and combinations of colors within its scope. This provision recognizes that modern trademarks are not limited to words or logos alone and may extend to distinctive product configurations capable of identifying the source of goods. The Court also referred to Section 2(1)(zb), which defines a trademark as a mark capable of distinguishing the goods or services of one person from those of another. The Plaintiff relied upon these provisions to argue that the bent-neck Harpic bottle had acquired distinctiveness through extensive commercial use and had become a ‘source identifier’ in the minds of consumers.

The Plaintiff further invoked Section 29 of the Trade Marks Act relating to infringement of registered trademarks. It was argued that the Defendant’s bottle shape created deceptive similarity likely to confuse consumers regarding the origin of the goods. The Court accepted the contention that trademark law serves the broader purpose of preventing consumer confusion and protecting the goodwill associated with distinctive marks and trade dress.

Simultaneously, the Court examined the framework of the Designs Act, 2000, which provides limited-term protection for novel and aesthetically appealing product designs. Under the Designs Act, exclusive rights over a registered design are granted only for a specified statutory period, after which the design ordinarily enters the public domain. The Defendant argued that since the Plaintiff’s design registration had expired, the Plaintiff could no longer claim exclusivity over the bottle shape. According to the Defendant, permitting trademark protection after the expiry of design rights would effectively extend the monopoly beyond the duration intended by design law.

The Court, however, distinguished the objectives of the two statutes. It observed that design law protects novelty and visual appearance for a limited duration, whereas trademark law protects marks that function as indicators of commercial origin. Therefore, expiry of design registration does not automatically extinguish trademark rights if the shape has independently acquired distinctiveness and secondary meaning in the marketplace.

Conclusion

The judgment highlights the balance that must be maintained between the Trade Marks Act, 1999 and the Designs Act, 2000. The Designs Act aims to ensure that designs become available for public use after the expiry of protection, while trademark law seeks to prevent consumer confusion and protect brand identity.

In this case, the Court attempted to balance these two objectives by holding that trademark protection may continue even after the expiry of design rights, but only when the product shape has become more than just a design and functions as a recognized source identifier connected with a particular brand.

Pari Malhotra 

Associate | Attorney at Law

pari.malhotra@iprattorneys.com

Reference:

^[1] IA NO. GA-COM/1/2026