Product packaging plays a crucial role in the consumer goods market where distinctive designs often become closely associated with a brand, such as the iconic Harpic bottle. To protect such features, companies commonly rely on design registrations, however, design protection is limited in duration to ten years, extendable by a further five years. This raises an important question: what happens once this protection expires?

This issue recently came to the forefront in a dispute between Reckitt Benckiser India Private Limited, the owner of the well-known Harpic toilet cleaner, and Godrej Consumer Products Limited (Godrej Consumer Products Limited v. Reckitt Benckiser India Private Limited IA No: GA-COM/1/2026 in IP-COM/3/2026). Reckitt alleged that Godrej’s toilet cleaner SPIC infringed the registered device mark associated with the Harpic bottle shape. While a Single Judge of the Calcutta High Court initially granted an ad-interim injunction against Godrej, the Division Bench later set aside the order and raised significant concerns regarding the scope of trademark protection for product shapes.

In this case, the Harpic bottle shape was originally protected through a design registration which expired. In the same year, Reckitt sought trademark protection for its device mark incorporating the bottle shape and the mark was subsequently registered. The Division Bench observed that granting trademark protection in such circumstances raises serious concerns, as it may effectively allow a party to revive an expired design right and undermine the principle behind design protection being awarded for a limited period.

The Court further emphasized that trademark protection applies to the mark as a whole rather than to the product shape in particular. When the competing products were compared in their entirety, the Court found that SPIC created a sufficiently distinct commercial impression due to the difference in product name and visual appearance. On this basis, the Court held that a case of trademark infringement was not made out at the interim stage.

This case highlights a broader legal question of whether a trademark protection can fill the gap once design protection expires. Indian law does not entirely prohibit overlap between design and trademark protection. While a design may lose protection if it begins to function as a trademark, the law does not clearly address the position after a design registration has expired. In many cases, the Indian courts have recognized protection and allowed enforcement actions for shape marks, trade dress and passing off. At the same time, they have repeatedly cautioned against allowing trademark law to create perpetual monopoly over product designs that were intended to be protected only for a limited period of time.

In practice, businesses can secure trademark protection for distinctive packaging or product configurations after expiry of design registration. However, it is pertinent to be aware that trademark protection safeguards the overall mark or commercial presentation of a product rather than granting exclusive rights over the product shape. While it helps enforce against other infringing products as a whole, it does not in any way act as a substitute for expired design protection. Once design protection expires, the shape generally enters the public domain in the interest of fair competition and no exclusive rights can ordinarily be claimed over the shape by itself.

Practical Takeaways for Businesses

  • Plan your IP protection early. Few products are better protected under design registration and for a few, trademark protection would be more apt. While design law protects product appearance for a limited time, trademarks can protect logos, branding and trade dress elements such as packaging, colours and labels. Adopting a layered protection is necessary.
  • Not all shapes can be registered as a trademark even after design expiry. Only shapes that function as distinctive source identifiers may qualify for trademark protection.
  • A product shape even when registered as a trademark, does not provide exclusive rights over the shape or design of the product.

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Written by Keerthana K