Protection of Bottle Shape as Trade Dress Post expiry of Design registration
**Head Note of the Case**
In this passing-off and trade-dress dispute, the High Court of Delhi granted an ad-interim injunction restraining the defendant from manufacturing, selling or dealing in toilet cleaners, glass cleaners and disinfectants under trade dresses that are deceptively similar to the plaintiffs’ well-known HARPIC, COLIN and LIZOL packaging, bottle shapes, colour schemes and get-up. The Court held that the plaintiffs had established prima-facie goodwill, distinctiveness of their trade dress and likelihood of confusion on account of slavish imitation. The defendant’s pleas of expired design registrations, functionality of bottle shapes, generic colours, house-mark distinction and third-party use were rejected. Dual protection under Designs Act and Trade Marks Act/trade dress was affirmed following the Full Bench decision in *Mohan Lall*. The balance of convenience and irreparable injury also favoured the plaintiffs.
**Introduction**
The present case arises out of a classic intellectual-property battle in the fast-moving consumer goods (FMCG) hygiene and cleaning-products segment. Reckitt and Colman Overseas Hygiene Home Limited and its Indian affiliate (collectively “Plaintiffs” or “Reckitt”) sought to restrain Mr. Akash Arora trading as M/s Grand Chemical Works (“Defendant”) from using packaging and bottle designs that the Plaintiffs alleged were virtually identical to their iconic HARPIC (toilet cleaner), COLIN (glass/house cleaner) and LIZOL (disinfectant) trade dresses. The dispute primarily centres on **passing off** and **infringement of unregistered trade dress**, with ancillary claims of design and copyright infringement. The judgment, delivered on 28 March 2026 by Hon’ble Mr. Justice Tejas Karia, is an interim order under Order XXXIX Rules 1 & 2 CPC deciding the plaintiffs’ application for temporary injunction (I.A. 46336/2024).
**Factual Background**
The Plaintiffs are part of the global Reckitt Benckiser group. They have been selling toilet cleaners under the mark **HARPIC** in India since 2001 (with the word mark used since 1984), glass and household cleaners under **COLIN** since 1998, and disinfectants under **LIZOL** since 1996. The Plaintiffs own numerous trade-mark registrations for the word marks, device marks, bottle shapes (including 3D/shape marks) and labels. They also held (now expired) design registrations for the HARPIC bottle (Nos. 184080 dated 29.11.2000 and 191291 dated 15.08.2002).
The Plaintiffs’ products are sold in distinctive **trade dresses** comprising:
- Specific bottle shapes with angled nozzles, indentations, curved patterns and grip features;
- Distinctive colour schemes (blue/red for HARPIC, blue/red/white for COLIN, blue/red/white/yellow for LIZOL);
- Unique label layouts, fonts, device elements and liquid colours.
The Plaintiffs have invested heavily in advertising and have generated massive annual revenues (e.g., HARPIC ≈ ₹1,279 Cr in 2023; COLIN ≈ ₹225 Cr; LIZOL ≈ ₹761 Cr). They claim the trade dresses have acquired **secondary meaning** and are source identifiers exclusively associated with Reckitt.
The Defendant, Mr. Akash Arora, trades as Grand Chemical Works and sells toilet cleaners, glass cleaners and disinfectants under the mark **GAINDA** (with a rhino logo). The Plaintiffs alleged that the Defendant’s packaging, bottle shapes, colour combinations and overall get-up are **slavish imitations** of the Plaintiffs’ trade dresses, creating a high likelihood of confusion among consumers.
**Procedural Background**
The Plaintiffs filed CS(COMM) 1052/2024 (and a connected suit CS(COMM) 5358/2025) before the High Court of Delhi seeking permanent injunction, damages, etc. Along with the suit, they moved I.A. 46336/2024 under Order XXXIX Rules 1 & 2 CPC for an ad-interim injunction restraining the Defendant from using the impugned trade dresses. Both sides were represented by senior advocates (Mr. Chander M. Lall for Plaintiffs; Mr. Darpan Wadhwa for Defendant). The matter was heard at length and judgment was reserved. The Court delivered a detailed 36-page reasoned order on 28 March 2026.
**Core Dispute**
Whether the Defendant’s packaging and bottle designs for its GAINDA products constitute **passing off** by imitating the Plaintiffs’ distinctive trade dresses, thereby causing likelihood of confusion and damage to the Plaintiffs’ goodwill. Ancillary issues included:
- Whether expired design registrations bar subsequent trade-mark/trade-dress protection;
- Whether bottle shapes are functional and therefore unprotectable;
- Whether colour combinations can be monopolised;
- Whether the Defendant’s house mark “GAINDA” and rhino logo are sufficient distinguishers.
**Arguments Raised by Both Parties**
**Plaintiffs’ Arguments:
- Long, continuous and extensive use + huge promotional expenditure have conferred enormous goodwill and secondary meaning on the trade dresses.
- Side-by-side comparison shows **slavish imitation** of bottle shape, colour scheme, label layout and overall get-up.
- Consumers purchase on the basis of **imperfect recollection**; trade channels are identical.
- Dual protection (design + trade mark/trade dress) is legally permissible (Full Bench *Mohan Lall*).
- No bona-fide explanation offered by Defendant for adopting nearly identical get-up → dishonest adoption (relying on *Midas Hygiene*).
- Third-party use is irrelevant; Plaintiffs have been enforcing rights against infringers.
- Prima-facie case, balance of convenience and irreparable injury all favour injunction.
**Defendant’s Arguments**:
- Plaintiffs’ design registrations for bottle shapes have expired; they cannot “evergreen” the monopoly by registering the same shapes as trade marks.
- Bottle shapes are **functional** (angled nozzle, grip, ergonomics) and common to the trade → no exclusivity.
- Colours (blue, red, white, yellow) are generic and not monopolisable.
- Prominent house mark “GAINDA” + rhino logo + different brand name dispel any confusion.
- Plaintiffs themselves use multiple colour variants and cannot claim exclusivity over any single scheme.
- Defendant has been in the market since 2016/2020; injunction would cause huge hardship while Plaintiffs (78 % market share) suffer none → balance of convenience against injunction.
- Interim orders in other cases have no precedential value.
**Judgement with Complete Citations and Their Context Referred in Reasoning of Judge**
The Court analysed the law of passing off in detail (paras 6–24) and reached the following conclusions:
1. **Elements of Passing Off** – The Court reiterated the classic trinity (goodwill, misrepresentation, damage). It emphasised that the plaintiff must show its get-up is distinctive and the defendant’s get-up is similar enough to deceive an average consumer of imperfect recollection. Comparison must be **holistic** – similarities, not dissimilarities, matter (para 19).
2. **Plaintiffs’ Goodwill & Distinctiveness** – The Court accepted the Plaintiffs’ evidence of 25+ years of uninterrupted use, massive sales turnover, advertising spend and 78 % market share. The trade dresses have acquired **secondary meaning** (para 20).
3. **Deceptive Similarity** – Side-by-side photographs and detailed comparison showed that the Defendant had copied essential features (bottle shape, colour scheme, cap colour, label layout, liquid colour). The overall impression at the point of sale is one of imitation (paras 10–11, 16–17). The Court held there was **no bona-fide explanation** for such close copying, invoking the *Midas Hygiene* principle that dishonest adoption raises a strong presumption of intent to pass off (para 12).
4. **Expired Designs & Dual Protection** – The Defendant’s strongest argument (evergreening via trade-mark registration after design expiry) was rejected. The Court relied on the **Full Bench decision in Mohan Lall, Proprietor of Mourya Industries v. Sona Paint & Hardware, AIR 2013 Delhi 143** (para 18), which held that shape of goods/packaging can simultaneously enjoy design and trade-mark/trade-dress protection. The Five-Judge Bench in *Carlsberg Breweries v. Som Distilleries & Breweries Ltd., AIR 2019 Delhi 23* was held not to have overruled *Mohan Lall*. The Court clarified that as long as the design elements are used as part of a **larger trade dress**, they remain protectable (para 18).
5. **Functionality & Colour Arguments** – The Court held that while individual colours or functional elements may not be monopolised, the **overall combination, arrangement and presentation** (ensemble) had acquired distinctiveness. Therefore, the Defendant’s reliance on *Colgate Palmolive Co. Ltd. v. Patel* (2005) 31 PTC 583 (Del), *Britannia Industries Ltd. v. ITC Ltd.* (2017) 240 DLT 156 (DB), *ITC Ltd. v. Crescendo Tobacco Agency* 2011 (46) PTC 65 (Cal), *RB Health (US) LLC v. Dabur India Ltd.* 2020 (84) PTC 492 (Del) and *Reckitt Benckiser (India) Ltd. v. Cavinkare Pvt. Ltd.* 2007 SCC OnLine Del 736 was held inapplicable (para 22).
6. **House Mark & Third-Party Use** – The Court ruled that the prominent “GAINDA” mark and rhino logo do not dispel confusion when the overall get-up is deceptively similar (*Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories* (1965) 1 SCR 737 and *Intex Technologies* (2017) 239 DLT 99 (DB) distinguished – para 19). Third-party use by small infringers does not disentitle the Plaintiffs (*Pankaj Goel v. Dabur India Ltd.* 2008 (38) PTC 49, *Corn Products Refining v. Shangrila Foods* AIR 1960 SC 142, *National Bell Co. v. Metal Goods Mfg. Co.* AIR 1971 SC 898 – para 23).
7. **Prima Facie Case, Balance of Convenience & Irreparable Injury** – All three ingredients were held satisfied. The Plaintiffs had made out a strong prima-facie case; delay/laches was rejected; balance of convenience favoured the Plaintiffs because the Defendant’s products were launched much later and the Plaintiffs would suffer irreparable damage to brand equity (paras 5.9, 24–25).
**The Final Decision of Court**
The Court **allowed** I.A. 46336/2024 and granted an **ad-interim injunction** in favour of the Plaintiffs. The Defendant, its directors, servants, agents, etc., were restrained from manufacturing, selling, offering for sale, advertising or dealing in:
(i) Toilet cleaners in a trade dress deceptively similar to the Plaintiffs’ HARPIC trade dress;
(ii) Glass cleaners in a trade dress deceptively similar to the Plaintiffs’ COLIN trade dress; and
(iii) Disinfectants in a trade dress deceptively similar to the Plaintiffs’ LIZOL trade dress.
The application was disposed of with the above directions (para 26).
**Point of Law Settled in the Case**
1. **Dual protection** of product configuration/shape as both registered design and unregistered trade dress/trade mark is permissible under Indian law (*Mohan Lall* Full Bench reaffirmed).
2. In passing-off actions, the **overall get-up** and **first-impression similarity** are decisive; meticulous side-by-side dissection is not the test.
3. **Dishonest adoption** (no explanation for close copying) raises a strong presumption of intent to pass off (*Midas Hygiene* principle).
4. Expired design rights do not automatically extinguish trade-dress rights in the packaging when the shape has acquired secondary meaning through long use.
5. Individual colours or functional features may be common to the trade, but their **distinctive combination and arrangement** in the overall trade dress can still be protected.
6. A prominent house mark or logo does not automatically negate confusion where the overall visual impression created by the packaging is deceptively similar.
Case Title: Reckitt and Colman Overseas Hygiene Home Limited & Ors. Vs. Mr. Akash Arora trading as Grand Chemical Works
Date of Order: 28 March 2026
Case Number: CS(COMM) 1052/2024
Neutral Citation: 2026:DHC:2599
Name of Court: High Court of Delhi
Name of Hon’ble Judge: Hon’ble Mr. Justice Tejas Karia
**Suggested Titles for YouTube Explainer Video**
1. “HARPIC vs GAINDA: Delhi HC Grants Injunction in Massive Trade Dress Copying Case – Full Breakdown”
2. “Reckitt Wins Big! Why Delhi High Court Stopped ‘Gainda’ from Copying Harpic, Colin & Lizol Bottles”
3. “Trade Dress War in Toilet Cleaner Market – Mohan Lall Principle Applied | Detailed Judgment Analysis”
4. “Slavish Imitation of Packaging = Passing Off? Delhi HC Judgment Explained (Harpic Case 2026)”
5. “Can You Copy Bottle Shape After Design Expires? Delhi HC Answers in Reckitt vs Akash Arora Case”
6. “Harpic, Colin, Lizol Trade Dress Protected: Full Legal Analysis of 28 March 2026 Delhi HC Order”
7. “Why ‘GAINDA’ Rhino Logo Wasn’t Enough to Save the Defendant – Trade Dress Injunction Explained”
