Reckitt’s design registration for the iconic Harpic bottle expired — so it registered the bottle shape as a trademark and sued Godrej’s SPIC. The Calcutta High Court Division Bench set aside the injunction, warning that trademark law shouldn’t be used to revive an expired design monopoly.
The question
Distinctive product packaging — like the Harpic bottle — often becomes closely tied to a brand. Companies protect it by design registration, but that lasts only 10 years (extendable by 5). So what happens once it expires? Can trademark protection fill the gap?
The dispute
In Godrej Consumer Products Ltd v. Reckitt Benckiser India Pvt Ltd, Reckitt (owner of Harpic) alleged Godrej’s toilet cleaner SPIC infringed the registered device mark incorporating the Harpic bottle shape. A Single Judge of the Calcutta HC granted an ad-interim injunction; the Division Bench set it aside, raising serious concerns about the scope of trademark protection for product shapes.
The court’s concerns
The Harpic bottle shape had originally been protected by a design registration that expired. In the same year, Reckitt sought — and got — trademark protection for a device mark incorporating the bottle shape. The Division Bench observed this raises serious concerns: it may effectively let a party revive an expired design right, undermining the principle that design protection is for a limited period.
Crucially, the court emphasised that trademark protection applies to the mark as a whole, not to the product shape in particular. Comparing the competing products in their entirety, it found SPIC created a sufficiently distinct commercial impression — different name and visual appearance — so no infringement was made out at the interim stage.
The broader position
Indian law doesn’t entirely prohibit overlap between design and trademark protection. A design may lose protection if it starts functioning as a trademark, but the law doesn’t clearly address the position after a design registration expires. Courts have recognised shape marks, trade dress and passing off in many cases — while repeatedly cautioning against using trademark law to create a perpetual monopoly over designs meant for limited protection.
In practice, you can secure trademark protection for distinctive packaging/configuration after design expiry — but trademark protects the overall mark/commercial presentation, not the shape alone. It helps enforce against whole infringing products, but is not a substitute for expired design protection. Once design protection expires, the shape generally enters the public domain for fair competition, and no exclusive rights ordinarily attach to the shape by itself.
Practical takeaways for businesses
- Plan IP protection early and layered — design law protects appearance for a limited time; trademarks protect logos, branding and trade dress (packaging, colours, labels).
- Not every shape qualifies as a trademark after design expiry — only shapes that function as distinctive source identifiers may.
- A shape mark ≠ exclusive rights over the shape — even when registered, it protects the overall mark, not the product design.
The takeaways
- Trademark can’t simply revive an expired design — the court cautioned against perpetual shape monopolies.
- Marks are compared as a whole — SPIC’s distinct name/look defeated the infringement claim.
- Shape enters the public domain on design expiry — absent trademark-worthy distinctiveness.
- Layer protection deliberately — design for appearance, trademark for branding/trade dress.
Frequently asked questions
Can I trademark a product shape after its design registration expires? You can seek trademark protection for distinctive packaging/configuration, but it protects the overall mark — not the shape alone — and courts caution against using it to revive an expired design monopoly.
Why did the court refuse an injunction in the Harpic case? Because trademark protection applies to the mark as a whole, and SPIC’s distinct name and appearance created a sufficiently different commercial impression — so no infringement at the interim stage.
Does registering a shape as a trademark give exclusive rights over the shape? No — even when registered, it protects the overall mark/commercial presentation, not exclusive rights over the product shape itself.
What happens to a product shape when design protection expires? It generally enters the public domain in the interest of fair competition, unless the shape functions as a distinctive source identifier meriting trademark protection.
Legislation referred to
- The Trade Marks Act, 1999
- The Designs Act, 2000