Can trademark law be used to reclaim what design law has deliberately released into the public domain? Khushi Krishania writes on the Calcutta High Court’s recent Division Bench decision in the Harpic v. Spic dispute, explaining how it revisits this uneasy intersection, but ultimately leaves its most difficult questions unresolved. Khushi is a third-year B.Sc. LL.B. (Hons.) {Cybersecurity} student at the National Law Institute University, Bhopal, with a particular interest in the intersection of copyright and data protection law.
After Crocs, After Carlsberg: Does Harpic v. Spic Finally Clear the Air?
By Khushi Krishania
Can a design be registered as a trademark after its term expires? And where the shape in question is functional, can an infringement action still be sustained? These are two of the most contested questions at the intersection of design and trademark law, and the Calcutta High Court’s Division Bench order in Godrej Consumer Products Ltd. v. Reckitt Benckiser (India) Pvt. Ltd. (February 2026), (Spic v. Harpic), is the latest judicial attempt to navigate them. The Division Bench set aside a Single Judge’s ad-interim injunction that had restrained Godrej from selling its Spic toilet cleaner bottle on the ground that it was virtually identical to Reckitt’s registered Harpic bottle shape. When asked to intervene, the Supreme Court declined, stating that the parties must exhaust their remedies before the High Court rather than seek intervention in what remains an ongoing dispute. In this post, I argue that the Division Bench leaves both the substantive questions largely unresolved, thereby missing an opportunity to bring clarity to one of the most unsettled areas of IP law.
The Dispute in Brief:
Reckitt Benckiser obtained a design registration for the “HARPIC BOTTLE AND CAP” in 2002. Upon expiry of the design registration in 2017, Reckitt obtained a trademark registration for the same bottle shape. This was used as a basis for an infringement action against Godrej’s competing product, Spic. The SB granted an ex-parte ad interim injunction in favour of Reckitt, holding that since the registration certificate depicts the bottle from multiple angles, protection prima facie extends to the bottle’s shape and not merely its labels. Under Sections 28 and 31 of the Trade Marks Act, a valid registration automatically entitles the proprietor to protection and constitutes prima facie evidence of validity. This was consistent with an earlier DHC DB holding in Hindustan Unilever v. Reckitt Benckiser (2023), where the same mark was considered, and the same conclusion reached on identical reasoning.
Division Bench Order: Not So Fast!
The DB noted that trademark infringement and passing off claims were pleaded only as an “afterthought” in the plaint. The initial part of the plaint was framed as a disparagement suit, and it was only in paras 69-79 that arguments of trademark infringement and passing off were claimed.
Most notably, the court stated: “Apart from being vague the grant of trademark to the plaintiffs after expiry of its design under the Act of 2000 is wholly suspect. There is serious doubt whether the appellant could have obtained the trademark in question to revive indirectly an expired proprietary right of design.”
On a visual comparison, the Spic bottle was found to be distinctly different from the Harpic bottle with the only similarity being the general shape of the dispenser, which was treated as functional. Applying Section 17, the Court held that “the device HARPIC BOTTLE AND CAP” had to be assessed as a whole. The bottle shape in isolation cannot ground an infringement claim unless the full combination of colour, name, writing, and display of the mark is replicated. The injunction was vacated for lack of any prima facie case.
This leaves two important issues unaddressed. The first is acquired distinctiveness. Even if a shape is functional, years of exclusive use in the market can cause consumers to associate that shape with a particular brand rather than the product category in general. This would not support a trademark infringement claim, but is a recognised basis for passing offa route that was unavailable on the facts of this case as the counsels for Reckitt had admitted that this was not a passing off suit (see para 14). The second issue is functionality i.e. whether a shape that exists purely to serve a practical purpose, like the under-rim dispenser shape of Harpic, can ever be protected as a trademark at all. By calling the trademark registration “wholly suspect” without addressing either question, the Court reached a result that conflates two ideas.
Can a Trademark Registration Revive an Expired Design?
Section 2(d) of the Designs Act, 2000 excludes from the definition of a “design” any feature that functions as a trademark. Section 2(1)(m) of the Trade Marks Act, 1999 by contrast, expressly includes the shape of goods within its definition of a mark. Mohanlal vs. Sona Paint & Hardware (2013) dealt with the same question, where it was held that while Section 2(d) of the Designs Act excludes from the definition of a design, the use of the design as a trademark post its registration is not a ground for cancellation under Section 19.
However, the full judge bench in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd. (2017), stated that Mohanlal’s observation on this is “inaccurate” as it failed to engage with Section 19(e) of the Designs Act, which allows which allows cancellation of a registered design that does not meet the definition of “design” under Section 2(d). That definition is important as the Designs Act specifically excludes anything that qualifies as a trademark.
Therefore, Harpic v Spic poses the same question on registration post-expiry. In my opinion, where a trademark registration has been validly granted, the Court’s characterisation of it as “wholly suspect” without elaborating the legal basis for that apprehension is both unfounded and confusing. It conflates the question of whether a shape ought to have been registered with the entirely separate question of whether a subsisting registration can find an infringement action.
The Designs Act limits design protection to prevent perpetual monopolies over aesthetic and functional product shapes. If a design has been placed in the public domain by the operation of the Designs Act’s limitation period, trademark law, with its potentially perpetual duration, should not be used as a backdoor to retrieve it. At the same time, this principle must not be applied as an absolute bar that extinguishes all post-expiry protection without qualification. Where a rights-holder can show that the shape has acquired secondary meaning in the minds of consumers, the law of trademarks and passing off recognises and protects that acquired distinctiveness. Such protection does not conflict with the legislative intent of the Designs Act because it does not revive the design monopoly. It recognises an entirely separate right earned through commercial use. The two regimes operate on different foundations, and the expiry of one does not automatically extinguish the other.
The Passing Off Question, What Harpic Doesn’t Say:
A Passing off action requires the existence of goodwill, misrepresentation, and loss or its likelihood. In Carlsberg v. Som Distilleries and later confirmed in Crocs, Inc. U.S.A. v. Bata, the Court held that the defendant’s use of the plaintiff’s design must constitute use as a larger trade dress. A passing off action for a registered design used as a trademark is maintainable both during the continuity of the registration and after its expiry, provided the mark has independently acquired the necessary secondary meaning. Thus, the evergreening concern is addressed by requiring the shape to independently satisfy all the standards for trademark recognition through use and acquisition of distinctiveness. This route was not available in the present case due to Reckitt’s own limitation. The DB further noted that upon design expiry, the shape had entered the public domain and has now become generic. Crucially, it observed that the similarity in the dispenser shape is a functional necessity to dispense liquid under the rim of a toilet commode. While the Court did not frame this as a formal holding on the functionality aspect, the observation brings into focus the next question: does the functional character of a shape operate as an absolute bar to a claim of trademark infringement or passing off?
The Functionality Problem:
Under Section 9(3) of the Trade Marks Act, 1999, shapes that result “exclusively” from the nature of goods, or are necessary to obtain a technical result, are excluded from registration. In Super Smelters & Ors vs Srmb Srijan Private Limited it was held that even though the cylindrical shape of the TMT bar (subject of the infringement claim) was purely functional, the ribbed pattern on it fulfils the function of a unique identifier and was therefore protectable
A similar nuance arises in design law, as seen in Carlsberg, where one of the issues was whether the indentations and grooves on the beer bottle (the design features in question) served a functional purpose. The court held that normally, designs which are purely functional cannot form the basis for an action for infringement, as a functional shape is not registerable under the Design Act. A previous post criticises this as there is no such legislative prohibition in the Designs Act against the protection of functional designs. The more nuanced position emerges from TTK Prestige Ltd. v. Gupta Light House, where the court held that only if a design is purely functional and not possessed of any aesthetic appeal, then the design becomes non-registrable. Therefore, the test is not mere functionality but pure functionality in the absence of any aesthetic dimension.
These two standards, however, must not be conflated. A shape may be aesthetically distinctive enough to qualify as a design without consumers associating it with a particular commercial origin. The fact that the Harpic bottle was registered as a design, therefore, does not, by itself, establish that it functions as a trademark source identifier. However, what can be sufficiently concluded is that the Harpic bottle’s curved dispenser almost certainly has some aesthetic dimension beyond its functional purpose, which is precisely why it was registrable as a design in the first place.
Moreover, as noted in a previous post, trademark law is not a tool for incentivising creation or production; it is a tool of source identification for the benefit of consumers. Its policy objective is to ensure that average consumers are not confused or deceived and that their search costs are reduced through distinctiveness. Allowing trademark protection for a shape after its design monopoly has expired is only defensible where the shape has genuinely come to identify a single commercial source in the minds of consumers and not merely because it was once registrable as a design. Given that there is no prohibition on recognising shapes as trademarks where they serve as source identifiers, refusing to recognise the Harpic Bottle Cap and Shape as a valid trademark is troublesome.
Conclusion
Harpic v. Spic makes the central tension between trademark and design law explicit in a way that previous judgments have not. Notably, the DB did not engage with the prima-facie validity of trademark registration even in light of a similar DB holding in Hindustan Unilever v. Reckitt Benckiser (2023) for the same mark that was held to cover the bottle’s shape. Additionally, the conclusion on functionality appears sound on the surface, but it does not stand on its own legs: the generic nature of the shape is arrived at from the prior finding that the design registration had lapsed and that trademark protection does not extend to the shape of the product. It is yet to be seen if the HC’s trial judgment finally clears the air on these questions.
