The Calcutta High Court recently clarified the issue over whether an expired design registration can transition into a shape trademark and has called such attempts “wholly suspect”, observing that a mark requiring interpretation cannot be enforced.
The court’s decision came in the case of Reckitt Benckister (India) Private Limited v Godrej Consumer Products Limited (2026).
The parties had come before the court over the design of their bottles of toilet cleaning liquid. Reckitt registered the trademark of the device of the Harpic bottle and cap for its product Harpic toilet cleaner, which has been in the Indian market since 1984. Reckitt also had registered the mark’s design in 2002, which had expired.
The Designs Act 2000 grants protection of 10 years, extendable by five years, to registered designs.
Reckitt’s bottle is blue with the product name displayed in bold letters. The duck-head shape of the bottle, acting as the dispenser for the cleaning liquid, has now become generic after the expiry of the registered design.
Godrej released its liquid toilet cleaner in October 2025, with the name Godrej Spic. The bottle is black and the label is completely different from Reckitt’s Harpic. The bottle design is different but has a similar shaped dispenser as Harpic. Godrej Spic also has a different bottle cap than Reckitt’s Harpic.
The contention between the parties began with a Godrej advertisement comparing its product with Reckitt’s. Reckitt claimed the advertisements were disparaging.
Reckitt approached the high court citing urgency and the single judge bench passed the impugned order ex-parte, restraining Godrej from using its product.
Godrej then filed the present appeal before a division bench of the high court against the ex-parte order.
Reckitt argued before the court that once trademark infringement is alleged, an injunction should follow as a matter of course.
Godrej argued that the advertisements in question had been airing since October 2025 and Reckitt had wrongly represented the matter as urgent to the single judge bench.
During the proceedings, it was also presented that Reckitt’s main grievance was the disparaging advertisements and trademark infringement had been added as an afterthought. Therefore, undertakings by Godrej to not publish disparaging material should’ve sufficed, addressing Reckitt’s main grievance.
The court said Reckitt and Godrej’s bottles of cleaner were distinctly and visibly different from each other. The court also said the shape of the bottle could not be considered infringement unless the colour, name, writing and display was copied.
Finally, the court said granting a trademark after the expiry of a registered design was “wholly suspect” and a trademark that requires interpretation could not be enforced. The court also expressed doubt on whether Reckitt could have obtained the trademark to indirectly revive its expired proprietary rights in the design.
The court set aside the single judge bench order, allowing Godrej to continue selling its products and ruled that Reckitt’s registered design protection on the Harpic bottle had expired.
