The Calcutta High Court has held that once a party demonstrates a valid registration for the shape of a product under the Trademarks Act, 1999, it is prima facie entitled to protection under Section 28 of the Act. The registration itself serves as prima facie evidence of its validity under Section 31.

Consequently, when an infringement of such a registered trademark (in this case, the shape of a bottle) is established, and the Court is satisfied that the defendant’s adoption of a confusingly similar shape was deliberate, an injunction must follow as a normal course, regardless of the consequences to the defendant, added the High Court.

In such circumstances, the balance of convenience and the risk of irreparable injury lie in favour of the petitioner (Reckitt Benckiser), warranting the grant of an ad interim injunction against the respondent (Godrej Consumer Products).

A Single Judge Bench of Justice Ravi Krishan Kapur observed that under the Trademarks Act, 1999, it is possible to obtain registration for the shape of a product, as the core purpose of a trademark is to distinguish the commercial origin of goods in the minds of consumers. The Bench noted that while the objective of the Designs Act, 2000 is to grant a monopoly for a limited period, the cancellation or expiry of a design monopoly does not inherently mean that a trademark monopoly on the registered mark cannot exist or be recognized.

The Bench found that the petitioner’s case depended on the registrations it holds under the Trademarks Act, particularly TM application Number 3491010, which was applied for the HARPIC bottle and cap. The registration certificate for this application depicted a six-sided view of the product, leading the Bench to conclude at the prima facie stage that it is difficult to accept that the trademark protection does not extend to the shape of the bottle.

The Bench further observed that the shapes of the two bottles are ‘virtually identical and strikingly similar’, creating a likelihood of confusion and deception for the average consumer. Ot noted that the respondent’s decision to adopt the impugned shape was intentional and deliberate, constituting a ‘calculated risk’.

Briefly, the petitioner had initially filed a suit for infringement under the Trademarks Act, 1999, and for passing off. The suit concerns the petitioner’s registered trademark “HARPIC”, specifically including the shape of the HARPIC bottle and its cap, which the petitioner has been selling since 1920 through an affiliate, launched the product in India in 1984, and obtained a design registration for the bottle in 2002, which has since expired.

The petitioner’s grievance is against the respondent, Godrej Consumer Products Limited, for its toilet cleaner product “Godrej Spic”, which is sold in a bottle alleged to be confusingly similar to the petitioner’s HARPIC bottle. At the ad interim stage, the petitioner limited its claim to infringement under the Trademarks Act, 1999, and did not press for relief on account of passing off.

Appearances:

Senior Advocates Sudipto Sarkar, S. N. Nookherjee, and Ratnanko Banerji, along with Advocates Sanjay Ginodia, Jawahar Lal, Nancy Roy, Shwetank Ginodia, Mini Agarwal, Naman Choudhury, and Sirin Firdous, for the Petitioner

Senior Advocate Ranjan Bachawat, along with Advocates Soumya Roychowdhury, Shounak Mitra, Vaibhavi Pandey, Akshita Bohra, Samina Khanum, and Ojasvi Gupta, for the Respondent