[Cites 17, Cited by 0]
Calcutta High Court
Reckitt Benckiser (India) Private ... vs Godrej Consumer Products Limited on 25 February, 2026
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
OIPD-1
IN THE HIGH COURT AT CALCUTTA
(Intellectual Property Rights Division)
ORIGINAL SIDE
BEFORE:
The Hon'ble Justice Ravi Krishan Kapur
IA NO. GA-COM/1/2026
IP-COM/3/2026
RECKITT BENCKISER (INDIA) PRIVATE LIMITED
VS
GODREJ CONSUMER PRODUCTS LIMITED
For the petitioner : Mr. Sudipto Sarkar, Senior Advocate
Mr. S. N. Nookherjee, Senior Advocate
Mr. Ratnanko Banerji, Senior Advocate
Mr. Sanjay Ginodia, Advocate
Mr. Jawahar Lal, Advocate
Mr. Nancy Roy, Advocate
Mr. Shwetank Ginodia, Advocate
Ms. Mini Agarwal, Advocate
Mr. Naman Choudhury, Advocate
Mr. Sirin Firdous, Advocate
For the respondent : Mr. Ranjan Bachawat, Senior Advocate
Mr. Soumya Roychowdhury, Advocate
Mr. Shounak Mitra, Advocate
Ms. Vaibhavi Pandey, Advocate
Ms. Akshita Bohra, Advocate
Ms. Samina Khanum, Advocate
Ms. Ojasvi Gupta, Advocate
Heard on : 24.02.2026, 25.02.2026
Judgment on : 25.02.2026
Ravi Krishan Kapur, J.:
1. The petitioner is a globally renowned multinational company and is
engaged in the manufacture, packaging, sale and distribution of various
health and hygiene products under different brands i.e., DETTOL, HARPIC,
VEET, LIZOL, DISPRIN, DUREX, MORTEIN.
2. This suit has been filed in respect of the registered trademark "HARPIC"
including the "HARPIC" bottle shape and cap. The petitioner complains of
infringement under the Trademarks Act, 1999 (the Act) and passing off.
3. The petitioner through its affiliate, has been selling "HARPIC" since 1920. In
or about 1979, the petitioner obtained registration for the word mark
"HARPIC" in India in Class 3. Thereafter, in 1984, the petitioner launched
its product "HARPIC" in India and commenced using the HARPIC bottle
shape and trade dress. In 2002, the petitioner obtained a design
registration bearing no. 191291 for "HARPIC" toilet cleaner bottle.
Admittedly, the statutory protection granted to the petitioner under the
Designs Act, 2000 has expired. However, the petitioner continues to enjoy
registrations under the Act. At this ad interim stage, it is submitted on
behalf of the petitioner that they are not pressing for any relief on account
of passing off and only limit their case to infringement under the Act.
4. The grievance of the petitioner pertains to the impugned product "Godrej
Spic" being sold in the same category of goods i.e., toilet cleaners. It is
contended that the impugned product is being sold in a bottle which is
confusingly similar and infringes upon the petitioner's registered mark for
its product HARPIC bottle.
5. On behalf of the petitioner, it is submitted that on a conjoint reading of
sections 2(1)(m), 2(q) and 2(z)(b) of the Act even though protection under
the Designs Act has expired, the petitioner can claim protection in view of
the registration granted under the Act. The respondent being a new entrant
is deemed to have been aware of the petitioner's product. The respondent
has deliberately and slavishly copied the petitioner's trade dress, bottle
shape as well as the cap which constitutes infringement of the petitioner's
registered mark. In such circumstances, the petitioner prays for interim
reliefs restraining the respondent from selling their products in a shape
which is deceptively similar and strikingly identical as that of the
petitioner's product. In support of such contentions, reliance is placed on
the decisions in Gorbadschow Wodka KG vs. John Distilleries 2011(4)
M.H.L.J. 842; Mohanlal vs. Sona Paint & Hardware 2013 SCC OnLine Del
1980 and Super Smelters Limited and Ors. vs SRMB Srijan Private Limited
2019 SCC OnLine Cal 4888.
6. On behalf of the respondent, it is submitted that any statutory protection
which the petitioner enjoyed insofar as the design of the HARPIC bottle is
concerned, has expired. There is no protection in favour of the bottle or the
cap of the petitioner's product "HARPIC". There is also no application for
registration for the shape of the bottle which is pending before any
authority. The registration under the Act is not in respect of the shape of
the bottle. The only protection is of the device and this cannot be extended
to the protection which the petitioner now seeks insofar as shape of the
bottle is concerned. Admittedly, the very same shape of the impugned bottle
is commonly and widely used in the industry and has now become generic.
In any event, under section 17 of the Act, a party can only claim exclusivity
in respect of the entire mark and not in respect of any part of the whole of
the trademark so registered. In support of such contentions, the
respondent relies on Pernod Ricard India Private Limited & Anr. vs.
Karanveer Singh Chhabra (2025) SCC OnLine SC 1701 and Shree Ganesh
Besan Mill & Ors. vs. Ganesh Grains Limited & Anr. (2021) SCC OnLine Cal
3068.
7. For convenience, a comparison of the two products is set out below:
Petitioner's product Respondent's Impugned product
8. On a plain reading of the Act, it is possible to obtain registration of a shape of
a product. Trademark protection whether based on name, colour
combination, trade dress, or structural features centers on ability to
distinguish the commercial origin of goods and services in the minds of the
consumers.
9. It is true that the object of the Designs Act 2000 is that monopoly is for a
limited period and the public can freely use the shape of the article after the
expiry of the statutory period. Nevertheless, the cancellation of the design
monopoly per se does not necessarily mean that there can be no trade mark
monopoly on the registered mark or recognition of a mark or its distinct
indicia in a passing off action. [Super Smelters Limited & Ors vs. Srmb Srijan
Private Limited 2009 SCC OnLine 4888, Mohanlal vs. Sona Paint & Hardware
2013 SCC OnLine Del 1980].
10. At this stage, the crux of the case of the petitioner depends on the
registration which the petitioner is enjoying under the Act. The petitioner
has relied on diverse registration certificates granted under the Act. A list
whereof are fully enumerated both in the plaint and in the petition. In
particular, the petitioner relies on a registration vis-a-vis TM application
Number 3491010 which was applied for both for the HARPIC bottle and the
Cap. The registration granted by the authorities as annexed to the
application, discloses a six-sided view of the product of the petitioner. For
convenience, the annexure to the certificate of the said registration which
has been granted to the petitioner is set out below;
11. On a joint reading of Section 2(1)(m) read with 2(z)(b) of the Act, registration
is permissible even in respect of the shape of a bottle or its cap. This is clear
from the registration certificate which depicts the bottle from various angles
and hence it is difficult to accept at this stage that the trademark protection
does not extend to the shape of the bottle. Once the petitioner has shown a
valid registration certificate, it is automatically entitled to protection under
the Act (section 28 of the Act). To this extent registration is prima facie
evidence of validity (sections 31 of the Act). The question of invalidity of the
registration when raised at the appropriate stage in this suit or by filing an
application for rectification would be dealt with on its own merits.
12. The right which the petitioner seeks to enforce both in respect of the bottle
shape for its product HARPIC has also been recognized in Reckitt Benckiser
India Private Limited vs Ravi Kumar & Ors. Bearing CS (COMM) No. 542/2021
dated October 28, 2021, Reckitt Benckiser India Private Limited vs Sharad
Jagat Pal Shrivastav bearing CS (COMM) No. 552/2021, dated October 29,
2021, Reckitt Benckiser (India) Pvt. Ltd. vs Mr. Alok Jain & Anr. bearing CS
(COMM) 508/2020, dated November 19, 2020, Reckitt & Colman (Overseas)
Hygiene Home Limited & Ors. Vs Mr. Abhishek Pundir trading as Jay Shree
Enterprises bearing CS (COMM) No. 314/2025, dated April 7, 2025, Reckitt &
Colman (Overseas) Hygiene Home Limited & Ors. Vs. Ashok Kumar(s)/ John
Doe(s) & Ors. Bearing CS(COMM) No. 327/2024 dated 24.04.2024. In fact, in
Hindustan Unilever v. Reckitt Benckiser (INDIA) Private Limited. (OS No. 157
of 2021 dated 13 April 2023), the Hon'ble Division Bench while affirming the
view of the Single Judge had clearly held that prima facie the petitioner is
the registered proprietor of the trade mark in respect of the shape of the
HARPIC bottle.
13. The shapes of the two bottles are virtually identical and strikingly similar.
On a cumulative effect of the detailed resemblances of the two products,
there appears to be every likelihood of confusion and deception in the mind
of the average consumer. (Gorbadschow Wodka KG vs. John Distilleries 2011
(4) M.H.L.J. 842).
14. The decision to adopt the impugned trade dress or shape by the respondent
was intentional and deliberate. The respondent chose a course of action
being fully aware of its consequences and has taken a calculated risk. In
such circumstances, there is no question of any balance of convenience or
irreparable injury in their favour. Once the Court is satisfied that the
registered trademark of the petitioner has been infringed an injunction must
follow as a normal cause regardless of the consequences. (Allergan Inc. vs.
Milment Oftho Industries and Ors. AIR 1998 Cal 261 and N. R. Dongre vs.
Whirlpool Corporation AIR 1995 Del 300).
15. In such view of the matter, the petitioner has been able to make out a strong
prima facie case on merits, the balance of convenience and irreparable loss
lies in favour of orders being passed in their favour. Accordingly, there shall
be an ad interim order in terms of prayers a(i) and a(ii) of the Notice of
Motion till 23 March 2026. This order is limited only to the prayer for
infringement. The parties are directed to exchange affidavits. Let Affidavit-in-
Opposition be filed within a week from date. Reply thereto, if any, be filed
one week thereafter. List this matter as 'Specially Fixed Matter' on 16 March,
2026.
(RAVI KRISHAN KAPUR, J.)
Later:
After pronouncement of this order Mr. Ranjan Bachawat, Senior
Advocate, appearing on behalf of the respondent prays for stay of operation of
this order. The prayer for stay is considered and rejected.
(RAVI KRISHAN KAPUR, J.)
S.bag/S.K.
