Trade Dress Passing Off: Delhi HC Restrains GAINDA from Copying HARPIC, COLIN & LIZOL Get-Up

Summary

Reckitt and Colman Overseas Hygiene Home Limited and its group entities sued Mr. Akash Arora, trading as Grand Chemical Works, alleging that his GAINDA-branded toilet cleaners, glass cleaners, and disinfectants copied the distinctive trade dresses of HARPIC, COLIN, and LIZOL respectively. Grand Chemical Works defended on the basis that its prominent house mark 'GAINDA' was sufficient to distinguish its products, that Reckitt could not monopolise common colours, and that registering expired designs as trademarks was impermissible. The Delhi High Court granted an interim injunction across all three product categories, holding that the overall get-up of the GAINDA products was deceptively similar to Reckitt's trade dresses and that the distinctive combination of features had acquired secondary meaning through over two decades of uninterrupted use. The ruling reinforces that a third party's house mark does not neutralise passing off when the dominant visual impression of the packaging is copied, and that the dual protection of designs and trademarks is permissible under Indian law.

Background

When a household name colonises a product category so thoroughly that consumers reach for the shape before they read the label, every design choice on that bottle becomes a commercial asset worth protecting and worth copying. This is exactly what formed the heart of this trade dress passing off dispute before the Delhi High Court.

Reckitt and Colman Overseas Hygiene Home Limited, along with Reckitt Benckiser (India) Limited and a group entity (collectively, “Reckitt”) are the proprietors of three of the most recognised cleaning product brands in India: ‘HARPIC’ for toilet cleaners, ‘COLIN’ for glass and household cleaners, and ‘LIZOL’ for disinfectants. HARPIC has been in continuous use in India since 1984, with toilet cleaners launched in 2001; COLIN has been on Indian shelves since 1998; and LIZOL since 1996. By the defendant’s own concession, Reckitt commands a 78% market share in the relevant category. Net revenues for HARPIC alone reached Rs. 1,279.4 crore in 2023, with COLIN generating Rs. 225 crore and LIZOL Rs. 761.3 crore in the same year.

Each of Reckitt’s products carries a distinctive trade dress built around a combination of bottle shape and cap design, colour scheme, label layout, and the stylised presentation of the brand name. Reckitt had previously obtained design registrations for the HARPIC bottle shape under Design Registration Nos. 184080 (2000) and 191291 (2002), both of which expired in 2015 and 2017 respectively. Reckitt subsequently secured trade mark registrations for the HARPIC bottle and cap shapes (“HARPIC Bottle and Cap Marks”) under the Trade Marks Act, 1999 (“Trade Marks Act”), and holds an extensive portfolio of registrations across Classes 3, 5, 21, and 99 for all three brands.

Mr. Akash Arora, trading as Grand Chemical Works (“Grand Chemical”), operates out of Mayapuri Industrial Area, New Delhi and launched its cleaning products business in 2016 under the house mark ‘GAINDA’. Its toilet cleaner, glass cleaner, and disinfectant products were alleged by Reckitt to mirror the essential features of the HARPIC, COLIN, and LIZOL trade dresses, respectively, replicating the distinctive blue-and-red colour palette of HARPIC, the blue spray-bottle format of COLIN, and the yellow-and-blue presentation of LIZOL, while using substantially similar bottle profiles. Reckitt filed the present suit, CS(COMM) 1052/2024, seeking an interim injunction restraining Grand Chemicals from manufacturing and selling the Impugned Trade Dresses.

Issues

• • • Whether the overall get-up of Grand Chemical’s products is deceptively similar to Reckitt’s trade dresses so as to constitute passing off under Indian law
    • Whether the presence of the prominent house mark ‘GAINDA’ on Grand Chemical’s products is sufficient to dispel the likelihood of consumer confusion
    • Whether Reckitt can claim trade mark protection for the HARPIC bottle and cap shapes after those shapes were earlier registered and have since expired under the Designs Act, 2000 (“Designs Act”), or whether such registration amounts to impermissible evergreening
    • Whether Reckitt can assert rights in colour combinations such as blue-and-red or blue-and-yellow as part of its trade dress, or whether such colours are common to the trade and incapable of protection

Reckitt’s Arguments

• • • The trade dresses for HARPIC, COLIN, and LIZOL have been in continuous and uninterrupted use for over two and a half decades, generating substantial goodwill evidenced by multi-crore annual revenues and extensive advertising across all media
    • The distinctive combination of features in each trade dress, i.e., the bottle shape, cap colour, liquid colour, colour scheme, and label layout, collectively forms a source identifier that consumers associate exclusively with Reckitt’s products
    • A side-by-side comparison demonstrates that Grand Chemical has slavishly imitated the essential features of all three trade dresses, including bottle shapes that mirror the HARPIC Bottle and Cap Marks
    • In a passing off action, similarities rather than dissimilarities must be weighed, and the trade dress must be assessed holistically from the perspective of a consumer of average intelligence with imperfect recollection
    • The presence of the GAINDA house mark is insufficient to prevent confusion where the overall get-up is copied
    • Allegations of third-party use do not defeat an infringement or passing off claim, as proprietors are not required to pursue every infringer
    • Dual protection under design law and trade mark law is expressly permissible where the configuration of a container functions as a trade mark or trade dress.
    • The Delhi High Court Division Bench in Hindustan Unilever Ltd. v. Reckitt Benckiser (India) (P) Ltd., (2023) 2 HCC (Del) 417 has already held that the HARPIC Bottle and Cap Marks are shape marks, not merely device marks, and confirmed Reckitt’s exclusive rights in them

Grand Chemical’s Arguments

• • • The HARPIC Bottle and Cap Marks are invalid. Reckitt obtained design protection for the same bottle shapes under the Designs Act, enjoyed a fifteen-year monopoly, and is now attempting to evergreen those expired rights through trademark registrations, contrary to Section 2(d) of the Designs Act and Section 2(zb) of the Trade Marks Act; the registrations were also misclassified as device marks rather than shape marks to evade Registry scrutiny
    • The prominent use of the house mark ‘GAINDA’ and a distinct Rhino logo, along with unique labels, fonts, and cap designs, are sufficient added matter to distinguish Grand Chemical’s products and dispel any likelihood of confusion.
    • Basic colours such as blue, red, white, and yellow are not protectable under trademark law and Reckitt cannot claim a monopoly over them.
    • Bottle shapes dictated by functionality, ergonomics, and industry norms cannot attract trademark protection, and the angled nozzle and grip design of toilet cleaners fall squarely in this category.
    • The use of blue in toilet and glass cleaners is an industry-wide standard symbolising hygiene and is common to the trade; many third parties use similar colours and shapes
    • Grand Chemical launched its business in 2016 and has been in the market for nearly a decade with substantial investment in branding; an injunction would cause severe commercial hardship, while Reckitt, holding a 78% market share, faces no irreparable harm and the balance of convenience favours Grand Chemical
    • Where a plaintiff holds a registered design, a passing off claim must rest on something beyond the registered design itself.

Court’s Analysis and Observations

The Holistic Get-Up Test and the Passing Off Standard

The court began by laying down the governing standard for trade dress passing off: the distinctive features of a plaintiff’s get-up, taken in combination, must be “eye catching” and serve to identify a single source, and the comparison must be made holistically. A plaintiff cannot selectively isolate elements of its get-up; the overall ensemble, including features not present in the plaintiff’s packaging and including the defendant’s brand name, must be weighed. The focus in passing off is on overall similarity rather than on point-by-point dissection, and the test is the impression formed by a consumer of average intelligence with imperfect recollection.

Applying this standard, the court found that the essential features of Reckitt’s trade dresses, i.e., the colour of the packaging, the colour of the cap, the colour of the liquid, and the shape of the bottle, were replicated across Grand Chemical’s three product lines. The overall comparison at the point of sale created an impression that the Impugned Trade Dresses were an imitation of the Plaintiffs’ Trade Dresses, and Grand Chemical had offered no bona fide explanation for why its products bore such close resemblance.

The GAINDA House Mark as a Distinguishing Factor

Grand Chemical’s central argument was that its prominent house mark ‘GAINDA’, along with a Rhino logo, was sufficient to prevent consumer confusion and that Kaviraj Pandit and Intex Technologies supported this position. The court rejected this squarely. Where the dominant similarities between two trade dresses overwhelm the minor differences, the presence of a different brand name cannot save the defendant. The court noted that the holistic comparison plainly showed overall similarity.

Dual Protection: Can an Expired Design Live On as a Trade Mark?

The most legally significant question in the case concerned Grand Chemical’s evergreening argument. Grand Chemical contended that Reckitt, having registered and enjoyed a fifteen-year monopoly over the HARPIC bottle shapes under the Designs Act, was now barred from obtaining trade mark registrations over the same shapes after those design registrations expired. The court declined to accept this argument in light of the Delhi High Court Full Bench ruling in Mohan Lall, Proprietor of Mourya Industries v. Sona Paint & Hardware, AIR 2013 Delhi 143. The Court observed and reiterated that a trade mark, as defined under the Trade Marks Act includes the shape of goods, their packaging, and the combination of colours, and that dual protection from both design law and trade mark law may coexist where the configuration or shape of a container functions as a trade mark or trade dress.

Grand Chemical had sought to rely on Carlsberg Breweries v. Som Distilleries & Breweries Ltd., AIR 2019 Delhi 23, in which a Five-Judge Bench examined the boundary between design and trade mark protection. The court clarified that Carlsberg did not overrule Mohan Lall: Carlsberg held that as long as the design elements are not claimed as a trade mark in isolation but rather as part of a larger trade dress, covering the presentation and packaging of the product, that trade dress remains protectable. Reckitt’s claims rested on the overall get-up of its products, not on the shapes alone, and the dual protection principle therefore applied. The court further noted that even under the Designs Act, use of a registered design as a trade mark may at most be a ground for its cancellation and there is no provision prohibiting the registration of a design as a trade mark.

Colour Combinations and Secondary Meaning

Grand Chemical argued that Reckitt could not monopolise basic colours such as blue, red, white, and yellow, citing decisions including Colgate Palmolive, Britannia Industries, ITC Ltd. v. Crescendo Tobacco, RB Health and an earlier Harpic ruling in Reckitt Benckiser v. Cavinkare. The court accepted the underlying principle: no party can claim monopoly over individual colours considered in isolation. However, it drew a clear line between individual colours and a distinctive combination, arrangement, and ensemble. Reckitt’s rights did not flow from any single colour but from the overall get-up, which was the distinctive combination and presentation that had been in continuous use for over two and a half decades and had acquired secondary meaning in favour of Reckitt’s products. The court held that although individual components of the trade dresses might be common to the trade, the overall get-up required protection, and the authorities cited by Grand Chemical therefore did not assist its case.

Goodwill and the Balance of Convenience

The court found that Reckitt had established, on a prima facie basis, the goodwill necessary to sustain a passing off action by uninterrupted use since 1996–2001 across three brands, consistent year-on-year revenue growth, a 78% market share conceded by Grand Chemical itself, and substantial advertising expenditure across all available media. Grand Chemical’s products entered the market in 2016, well after all three Reckitt brands were firmly established, and Grand Chemical could not therefore deny Reckitt’s goodwill or seek to benefit from it.

On the balance of convenience, the court rejected Grand Chemical’s argument that Reckitt, with its dominant market position, could not be said to suffer irreparable harm. The continuing use of a deceptively similar trade dress across three product lines carried with it the daily risk of consumer confusion and erosion of brand equity, and the absence of a credible defence tipped the balance firmly in Reckitt’s favour.

Findings

In view of the observations and the arguments presented by both the parties, the Delhi High Court held that:

• • • Reckitt had prima facie established goodwill in the trade dresses for its HARPIC, COLIN, and LIZOL products through over two and a half decades of continuous and uninterrupted use, substantial revenues, and extensive advertising
    • The Impugned Trade Dresses used by Grand Chemical are deceptively similar to the Plaintiffs’ Trade Dresses: the essential features, including the colour of the packaging, the cap colour, the liquid colour, and the bottle shape, were copied, creating an overall impression of imitation at the point of sale
    • The presence of the house mark ‘GAINDA’ does not dispel consumer confusion because the dominant similarities in the overall get-up overwhelm the minor differences between the two sets of products
    • Reckitt’s trade mark registrations for the HARPIC Bottle and Cap Marks are not barred by the earlier expiry of design registrations for the same shapes; dual protection under design law and trade mark law is permissible under Indian law, and Reckitt’s trade dress rights flow from the overall get-up, not from the shapes in isolation
    • Reckitt cannot claim monopoly over individual colours, but the distinctive combination, arrangement, and ensemble of colours and design features in its trade dresses have acquired secondary meaning through long and continuous use, entitling Reckitt to protection of the overall get-up
    • Third-party use of similar packaging does not disentitle Reckitt, as proprietors are not required to pursue every infringer
    • The balance of convenience favours Reckitt and Grand Chemical has failed to establish any credible defence
    • Grand Chemical Works, its proprietor, directors, partners, employees, servants, agents, and all acting on its behalf are restrained by interim injunction from manufacturing, selling, offering for sale, advertising, or otherwise dealing with: (i) toilet cleaners in the GAINDA trade dress deceptively similar to the HARPIC trade dress; (ii) glass cleaners in the GAINDA trade dress deceptively similar to the COLIN trade dress; and (iii) disinfectants in the GAINDA trade dress deceptively similar to the LIZOL trade dress

Case Citation: Reckitt and Colman Overseas Hygiene Home Limited & Ors. v. Mr. Akash Arora Trading as M/S Grand Chemical Works, CS(COMM) 1052/2024 & I.A. 46336/2024, High Court of Delhi, decided on 28 March 2026. Available at https://indiankanoon.org/doc/125284139/

Authored by Gaurav Mishra, IP Attorney, BananaIP Counsels