Trademark protection for product shape remains enforceable under the Trademarks Act despite expiry of design registration.

The petitioner, a multinational hygiene products company, owns the registered trademark "HARPIC," including the specific bottle shape and cap.

The petitioner has sold HARPIC since 1920, obtaining a word mark registration in India in 1979 and a design registration for the bottle in 2002.

While the design registration under the Designs Act, 2000 has expired, the petitioner holds valid trademark registrations under the Trademarks Act, 1999, specifically TM Application No. 3491010, which depicts a six-sided view of the bottle and cap.

The respondent launched a competing toilet cleaner, "Godrej Spic," using a bottle shape the petitioner alleges is "confusingly similar" and "strikingly identical."

The petitioner sought an ad interim injunction restricted to trademark infringement.

1. Whether the expiration of protection under the Designs Act, 2000 precludes the petitioner from claiming trademark protection for the shape of the bottle and cap under the Trademarks Act, 1999.

2. Whether the respondent's "Godrej Spic" bottle shape constitutes an infringement of the petitioner's registered trademark for the HARPIC bottle shape.

The court applied Section 2(1)(m), 2(q), and 2(z)(b) of the Trademarks Act, 1999, which establish that a "mark" includes the shape of goods and their packaging.

Under Section 28, valid registration grants the proprietor exclusive rights to use the mark, and Section 31 provides that registration is prima facie evidence of validity.

The court relied on *Super Smelters Limited v. SRMB Srijan Private Limited* and *Mohanlal v. Sona Paint & Hardware* to hold that the expiry of a design monopoly does not extinguish the right to seek trademark protection or passing off relief if the shape functions as a trademark.

The "likelihood of confusion" test for identical/similar shapes was derived from *Gorbadschow Wodka KG v. John Distilleries*.

The court reasoned that since the Trademarks Act expressly allows for the registration of shapes, the petitioner's valid registration (TM No. 3491010) depicting the bottle from six angles constitutes prima facie evidence of a protected right.

The court rejected the respondent's argument that the shape had become generic, noting that at the ad interim stage, the registration must be presumed valid until rectified.

Upon physical comparison, the court found the two bottle shapes to be "virtually identical" and "strikingly similar," leading to a likelihood of consumer deception.

The court further observed that the respondent’s adoption of a near-identical trade dress appeared "intentional and deliberate," negating any claim to the balance of convenience.

It held that a strong prima facie case of infringement was established.

The court granted an ad interim injunction restraining the respondent from selling products in the impugned shape until March 23, 2026.

The respondent’s prayer for a stay on the operation of the order was rejected.