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.<\/p>\n
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.<\/p>\n
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<\/strong> (“Trade Marks Act”), and holds an extensive portfolio of registrations across Classes 3, 5, 21, and 99 for all three brands.<\/p>\n 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.<\/p>\n 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.<\/span><\/strong><\/p>\n 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.<\/p>\n 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<\/em> and Intex Technologies<\/em> 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.<\/p>\n 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<\/em>, 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<\/strong><\/span>.<\/p>\n Grand Chemical had sought to rely on Carlsberg Breweries v. Som Distilleries & Breweries Ltd.<\/em>, AIR 2019 Delhi 23, in which a Five-Judge Bench examined the boundary between design and trade mark protection. The court clarified that Carlsberg<\/em> did not overrule Mohan Lall<\/em>: Carlsberg<\/em> 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<\/strong><\/span>. 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.<\/p>\n Grand Chemical argued that Reckitt could not monopolise basic colours such as blue, red, white, and yellow, citing decisions including Colgate Palmolive<\/em>, Britannia Industries<\/em>, ITC Ltd. v. Crescendo Tobacco<\/em>, RB Health<\/em> and an earlier Harpic ruling in Reckitt Benckiser v. Cavinkare<\/em>. 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<\/strong><\/span> 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.<\/p>\n 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\u20132001 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.<\/p>\n 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.<\/p>\n In view of the observations and the arguments presented by both the parties, the Delhi High Court held that:<\/p>\nIssues<\/h2>\n
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Reckitt’s Arguments<\/h2>\n
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Grand Chemical’s Arguments<\/h2>\n
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Court’s Analysis and Observations<\/h2>\n
The Holistic Get-Up Test and the Passing Off Standard<\/h3>\n
The GAINDA House Mark as a Distinguishing Factor<\/h3>\n
Dual Protection: Can an Expired Design Live On as a Trade Mark?<\/h3>\n
Colour Combinations and Secondary Meaning<\/h3>\n
Goodwill and the Balance of Convenience<\/h3>\n
Findings<\/h2>\n
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