The overlap between design protection and trademark protection has been a topic of debate in Indian intellectual property law. While the Designs Act, 2000, grants a limited statutory monopoly over the aesthetic features of an article, trademark law under the Trade Marks Act, 1999, protects distinctive features that identify the commercial origin of goods. A common question is whether the expiry of design protection necessarily places the design in the public domain, or whether it may continue to be protected under trademark law if the design has acquired distinctiveness.
Judicial Background: Coexistence of Design and Trademark Rights
Indian courts have previously examined the relationship between design rights and trademark or passing off claims.
In Mohan Lal vs Sona Paint & Hardware, the Full Bench of the Delhi High Court clarified the conceptual distinction between design infringement and passing off. The Court held that the two causes of action arise from different legal foundations, design infringement being based on a statutory monopoly arising from registration, whereas passing off is based on goodwill and misrepresentation in the marketplace.
Subsequently, the decision in Carlsberg Breweries A/S vs Som Distilleries and Breweries Ltd. revisited these principles. A larger bench held that although design infringement and passing-off claims are conceptually different, they may arise from the same set of facts and may be pursued together where appropriate.
Further, in Crocs Inc. USA vs Bata India Ltd. & Ors., the Delhi High Court elaborated on the relationship between design rights and trade dress protection. The Court held that the existence or expiry of design rights does not bar a passing off action, provided the plaintiff can demonstrate that the product shape has acquired secondary meaning and functions as a source identifier. It further clarified that trade dress protection may go beyond the registered design to the product’s overall visual impression.
These decisions jointly demonstrate that design protection and trademark protection operate in distinct but sometimes overlapping spheres and may coexist where the requirements of each regime are independently satisfied.
This issue recently came before the IPR Division of the Calcutta High Court in Reckitt Benckiser (India) Private Limited vs Godrej Consumer Products Ltd. [IA NO. GA-COM/1/2026, IP-COM/3/2026], where the Court examined whether the shape of the well-known HARPIC bottle could continue to be protected under trademark law despite the expiry of its design registration.
The Dispute
The plaintiff, Reckitt Benckiser (India) Private Ltd, is a multinational company engaged in the manufacturing and sale of hygiene and cleaning products, including the well-known toilet cleaner brand Harpic. The company claimed long-standing use of the distinctive Harpic bottle shape and trade dress, which has been used in India since the product’s launch in 1984.
The plaintiff obtained a design registration in 2002 for the Harpic bottle shape. However, this statutory protection had expired by the time the dispute arose. Despite the expiry of the design registration, the plaintiff contended that the bottle design remained protected under the Trademarks Act through trademark registrations covering the bottle and cap shape.
The dispute arose when the defendant, Godrej Consumer Products Ltd., introduced a competing toilet cleaner under the mark “Godrej Spic.” The plaintiff alleged that the defendant had adopted a bottle configuration confusingly similar to the Harpic bottle, thereby infringing its registered trademark rights and creating consumer confusion in the marketplace.
At the ad interim stage, the plaintiff limited its claims to trademark infringement and did not pursue a passing-off claim.
The primary question before the Court was whether the shape of a product can continue to enjoy protection under the Trademarks Act even after the expiry of design protection under the Designs Act.
The defendant argued that once the design registration expired, the bottle shape entered the public domain and could no longer be monopolised by the plaintiff. It was further contended that the plaintiff’s trademark registration related only to the device mark and not to the bottle configuration itself.
The plaintiff, on the other hand, relied on provisions of the Trade Marks Act to argue that product shapes are capable of functioning as trademarks, provided they distinguish the goods of one enterprise from those of others.
Court’s Analysis
The Court examined the relevant provisions of the Trade Marks Act, particularly Sections 2(1)(m), 2(1)(zb), and 28, which define a trademark and recognise that a trademark may include the shape of goods, packaging, and combinations of colours.
The Court noted that trademark protection is fundamentally concerned with uniqueness and the ability of a mark to indicate the source of goods in the minds of consumers. Therefore, if the shape of a product performs this function, it may qualify for protection as a trademark.
Importantly, the Court observed that the expiry of design protection does not automatically extinguish trademark rights. The purpose of the Designs Act is to provide a time-limited monopoly regarding aesthetic features, but this does not preclude protection under trademark law if the feature has acquired source-identifying significance. The Court relied on earlier judicial decisions, which recognised the coexistence of design and trademark protection.
Findings of the Court
Applying these principles, the Court found that the plaintiff possessed valid trademark registrations depicting the Harpic bottle from multiple angles, thereby indicating that the shape itself formed part of the registered mark.
The Court held that once a valid trademark registration is produced, the proprietor is prima facie entitled to protection under Section 28 of the Trademarks Act, and that the registration serves as evidence of validity under Section 31.
Accordingly, the Court rejected the defendant’s contention that trademark protection could not extend to the bottle shape. It was observed that the issue of the validity of the registration could be raised in rectification proceedings, but could not defeat the plaintiff’s rights at the interim stage.
The Court therefore granted ad interim relief restraining the defendant from using a bottle shape deceptively similar to the Harpic bottle.
Significance of the Decision
The ruling reinforces several important principles in Indian IP law:
First, it confirms that product shapes may function as trademarks where they serve to distinguish the goods of one trader from those of others.
Second, the judgment clarifies that the expiry of design protection does not automatically eliminate trademark protection. A product configuration that has acquired distinctiveness can continue to be protected under trademark law.
Third, the decision demonstrates the complementary relationship between different IP regimes. While design law protects novelty and aesthetic features for a limited period, trademark law protects distinctive source identifiers potentially for an indefinite duration.
Finally, the judgment stresses the importance of businesses strategically using multiple forms of IP protection, especially for products whose shapes or configurations have become powerful brand identifiers.
Conclusion
The decision in Reckitt Benckiser (India) Private Limited vs Godrej Consumer Products Ltd. offers useful guidance on the developing relationship between design and trademark protection in India. By recognising that product shape can continue to enjoy trademark protection even after the expiry of a design registration, the Court has affirmed that IP laws need to protect unique commercial identities in the market.
Authors: Manisha Singh (Partner) & Kratika Patel (Associate)