Kolkata: The Calcutta High Court has passed an ad interim order restraining Godrej Consumer Products Ltd. from selling its toilet cleaner “Godrej Spic” in a bottle found prima facie to be deceptively similar to the registered ‘Harpic’ bottle.
Justice Ravi Krishan Kapur passed the order in a suit filed by Reckitt Benckiser (India) Pvt. Ltd., which manufactures and markets Harpic toilet cleaner. The company had alleged infringement of its registered trademark, including the shape of the Harpic bottle and its cap.
Reckitt submitted that it has been selling Harpic in India since 1984 and holds trademark registrations under the Trade Marks Act in respect of the bottle and cap. Although its earlier design registration for the Harpic toilet cleaner bottle had expired, the company contended that it continued to enjoy statutory protection under trademark law. At the ad interim stage, the petitioner confined its claim to infringement and did not press relief on the ground of passing off.
Godrej opposed the plea, arguing that any statutory protection for the bottle design had lapsed and that the relied-upon registration did not grant exclusivity over the bottle shape. It was also contended that such bottle shapes are commonly used in the industry.
The court observed that under the Trade Marks Act, registration is permissible even in respect of the shape of a product. Referring to the registration certificate placed on record, which depicts the bottle from multiple angles, the court held that it was not possible at this stage to accept that trademark protection did not extend to the shape of the bottle.
The court further noted that once a valid registration certificate is produced, the registered proprietor is entitled to protection and registration constitutes prima facie evidence of validity. Any challenge to the validity of the registration may be considered at an appropriate stage or in rectification proceedings.