Evergreening of IP Rights Vis-À-Vis Harpic Bottles

Introduction

Design rights and trademark protection overlap ever-so-briefly when the “design” of a commodity transcends its aesthetic nature and steps into the shoes of being a source-identifier. However, such evergreening of monopolistic rights has often been denied by Courts.

Recently, in Godrej v. Reckitt[1] (“the Harpic case”), the Hon’ble Calcutta High Court upheld the tenets of fair competition in the market by refusing to protect the shape and structure of Harpic bottles as trademarks, post the expiry of the design registration under the Designs Act. The dispute arose out of Reckitt (“Harpic”) alleging Godrej of infringement of its registered trademark “HARPIC” and of passing off Godrej’s product, “Spic” as “Harpic”, on the basis of similarities in the bottle shape and cap. The judgment has been analysed in detail in the succeeding sections of this article.

The view adopted by the Calcutta High Court raises pertinent questions: whether the protection of a shape as a trade dress, if not a trademark, post the expiry of design rights, results in an impermissible monopoly, or is it just and reasonable in light of protecting brand identity?

Designs V. Trademarks: Conflicting or Converging?

The Designs Act, 2000 (“Designs Act”) grants protection for 10+5 years[2] to new or original designs, not contrary to public order or morality[3], that have not been previously disclosed, are distinguishable, and are not scandalous in nature[4]. The statute, however, expressly bars the registration of a trademark as a design[5]. Upon the lapse of protection, a design enters the public domain, free to be used and replicated by competitors and the public at large.

The Trade Marks Act, 1999 (“Trade Marks Act”) protects distinctive and distinguishable marks that are capable of commercial application and graphical representation[6]. By the letter of the law, the regime contrasts the time-bound protection granted by design law by granting potentially perpetual protection, i.e., the registration lasts for ten years, but it may be renewed an indefinite number of times[7]. It has been judicially settled that, contrary to common perception, trademark law does not restrict trademark protection only to brand names or logos. Shapes may be registered as trademarks, too[8], provided the shape in itself has acquired distinctiveness and functions as a strong brand identifier, having lost its generic connotation[9].

Disputes arise when rights-holders attempt to transgress the bounds of the design regime and transition to the trademark one, clearly attempting to restore a lapsed proprietary IP right. Courts have, time and again, carefully evaluated this legal conundrum and seldom permitted such transitions, particularly when the subject matter identifies more as an aesthetic or design feature than a source indicator.

Does the Jurisprudence Around Trade Dress Provide A Respite?

The matter of “trade dress” could be perceived as a middle ground between the two IP regimes. Trade dress has been substantially discussed in Vision Sports, Inc. v. Melville Corp.[10] as including the overall image of a product, including “features such as size, shape, colour combinations, texture, or graphics”. In Samsonite v. Vijay Sales[11], it was discussed that, to establish distinctiveness of a trade dress, it was imperative to prove that the trade dress had come to be associated exclusively with the products of the proprietor making such claim and the subsequent prima facie reputation of the trade dress. Further, it has been laid down that trade dress protection is broader than that of trademark, and it has been held to be the soul for the source identification of goods and services[12].

In light of best and honest market practices aimed at free and fair competition, accepting trade dress claims post the expiry of design rights may risk enabling the revival of expired proprietary rights under the trademark law. On the contrary, an overly restrictive approach may be detrimental to brand identity. Through the following judgments, courts have attempted to solve this juxtaposition.

i) Mohan Lal v. Sona Paint & Hardwares[13]

The Hon’ble Delhi High Court held it permissible for a plaintiff to institute a passing off action in respect of a design used as a trademark, provided the mark had acquired a secondary meaning. However, a composite suit combining actions against design infringement and passing off could not lie. Trying the proximate suits together was left to the Court’s discretion. The rationale of the ruling lies in the fact that a design could be used as a trademark post its registration, since the law[14] failed to list it as a ground for cancellation of design registration.

ii) Carlsberg Breweries v. Som Distilleries & Breweries Ltd.[15]

Contrary to Mohan Lal (supra), the Court adopted a different view. It held that one composite suit could be filed by joining causes of action of design infringement and of passing off. It noted that Mohan Lal’s view that a design could be used as a trademark was inaccurate, as Section 19(e) of the Designs Act provides for the cancellation of a design if it does not conform to Section 2(d), which bars the registration of trademarks as designs. However, elements of the design were permitted to be used as part of trade dress. It was categorically stated that the overlap between a design and trade dress arises out of their presentation. In the realm of design law, the presentation pertains to the novelty and aesthetics of the design, while in a passing off action, distinctiveness and the source-identifying nature of the mark need to be established.

iii) CROCS Inc., USA v. Bata India[16]

These appeals arose out of orders dated 18 February, 2019[17] by a Learned Single Judge. In the impugned judgment, the Court, relying on the interpretation of the law in Carlsberg (supra), ruled that a design registration only grants relief against design infringement, and that no proprietor could simultaneously claim the said design as its trademark or trade dress. The fact that Crocs’ design registration also constitutes a trademark made the suit not maintainable

On appeal, it was concluded that the availability of the remedy of passing off exists as a precious right and is not denied by any law. Carlsberg (supra) was interpreted to state that even if the facts do not reveal a design infringement, the Court can apply its mind and make out a case for passing off on the same factual matrix, and accordingly grant relief. Thus, the decision of the Learned Single Judge insofar as dismissing Crocs’ suit as not maintainable was held erroneous, and was quashed and set aside.

iv) Godrej Consumer Products Limited v. Reckitt Benckister India (P) Limited[18]

The instant appeal arose out of an ad interim order dated 25 February, 2026[19], by way of which Godrej was restrained from using its product. The shapes of the bottles of the parties’ products were evaluated to be virtually identical, which created a strong likelihood of confusion and deception in the mind of the average consumer. It held that the option of trademark protection was available, despite the cancellation or expiry of design rights, and that such protection extended to shapes as well.

On appeal, it was ultimately decided that the shape of the bottles, although similar, was purely functional in nature, and thus, the similarity arose due to the same reason. The colours of the product bottles and their labels were described as distinctly and visibly dissimilar. It was noted that the plaintiff, Reckitt, has disclosed causes of action arising out of the disparaging advertisements produced by Godrej for most parts of the plaint, and that actions against trademark infringement and passing off were only instituted as an afterthought. Trademark infringement was ruled to be an ancillary relief sought by Harpic, and it was thus chided along the lines of the election of an appropriate remedy. Most importantly, trademark rights post the expiry of design protection under the Designs Act were refused recognition.

From a policy perspective, the Hon’ble Calcutta High Court has correctly balanced IP and competition law by averting perpetual monopolies, encouraging innovation in the market, and upholding legislative intent behind the Designs Act. However, on the flip side, the ruling could potentially be criticised for being overreaching and rigid, and for under-protecting legitimate brand identity based on evidence of consumer perception. 

Way Forward

A reconciliation of exclusivity (IP law) and competition requires a comprehensive standard for the permissible transition of a design into a trademark, albeit in narrowly defined circumstances.

• The feature forming the crux of the dispute shall be non-functional in nature, conceptually different from the registered design, and shall have acquired a secondary meaning in the market and amongst the public.

• Evidentiary thresholds to prove such acquisition of a secondary meaning shall be heightened.

• A cooling-off period between the expiry of design rights and the institution of trademark rights shall be introduced.

• The market effects of such transitions, such as potential market foreclosure, shall be rigorously evaluated by the Competition Commission.

• Ultimately, the scope of overlap between the two intellectual properties shall be legislatively clarified once and for all, to mitigate ambiguity and judicial inconsistencies.

Conclusion

Thus, the current position of the law says that while the Designs Act protects visual “features of shape, configuration, pattern, ornament, or composition of lines or colours”[20], the Trade Marks Act can subsequently be applied to designs and protection may be extended, provided that the design has acquired distinctiveness or a secondary meaning in the minds of consumers. Such overlap shall not be functional or bound by technical necessity, and shall be seen as an identifier of the product’s commercial origin. The elements of a design may form a broader trade dress, and not the design per se.

Author: Daisy Banakhede, and Abharika Choudhuri, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

[1] Godrej Consumer Products Ltd. v. Reckitt Benckiser India (P) Ltd., 2026 SCC OnLine Cal 1419.

[2] Designs Act, 2000, §11(1), No. 16, Acts of Parliament, 2000 (India).

[3] Id, at §35.

[4] Id, at §4.

[5] Id, at §2(d), §19(d).

[6] Trade Marks Act, 1999, §2(zb), No. 49, Acts of Parliament, 1999 (India).

[7] Id, at §25(1).

[8] Supra, note 6; GM Modular (P) Ltd. v. Syska Led Lights (P) Ltd., 2022 SCC OnLine Del 2537.

[9] Knitpro International v. Examiner of Trade Marks, 2022 SCC OnLine Del 2096.

[10] 12 USPQ 2d 1740.

[11] Samsonite Corpn. v. Vijay Sales, 1998 SCC OnLine Del 324.

[12] Colgate Palmolive Co. v. Anchor Health and Beauty Care (P) Ltd., 2003 SCC OnLine Del 1005.

[13] 2013 SCC OnLine Del 1980.

[14] Supra, note 2 at §19.

[15] 2018 SCC OnLine Del 12912.

[16] 2025 SCC OnLine Del 4626.

[17] Crocs Inc. USA v. Aqualite India Ltd., 2019 SCC OnLine Del 11957.

[18] 2026 SCC OnLine Cal 1419.

[19] Reckitt Benckister (India) (P) Ltd. v. Godrej Consumer Products Ltd., 2026 SCC OnLine Cal 1664.

[20] Supra, note 2 at §2(d).