Shape Marks Protection in India: The Tale of Two Courts

Introduction

The paradigm of Trademark law has undergone a sea change and now travels beyond the traditional and conventional concepts of word mark, logo mark and label marks. The definition[1] accorded to a ‘mark’ under the Trademarks Act, 1999 (“Act”) encompasses a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. A ‘trademark’ is further defined as a ‘mark’ that is (a) capable of being graphically represented; (b) which is capable of distinguishing the goods/services of one person from those of others; and (c) may include shape of goods, their packaging and combination of colours[2].

Based on the above definitions under the Act, trademarks can be divided into two broad categories. Firstly, conventional trademarks such as device, brand, heading, label, ticket, name, signature, word, letter and numeral; and secondly, non-conventional marks such as shape of goods, packaging, and colours/combination of colours, besides the more popular non-conventional smell and sound marks.

Recently, the Delhi High Court in Abhimanyu Prakash & Ors. v. Ferrero S.P.A & Ors. and the Calcutta High Court in Godrej Consumer Products Limited v. Reckitt Benckiser India Private Limited have delivered interesting judicial interpretations concerning shape marks and their protection, thereby adding to the developing debate around non-conventional marks in India.

We review both the judgments coming from the two prominent courts in this write-up.

Abhimanyu Prakash & Ors. v. Ferrero S.P.A & Ors.[3] (The Nutella Jar Case before the Delhi High Court)

i. Case Facts

In 2023, Ferrero S.P.A (“Ferrero”), the proprietors of the registered trademarks NUTELLA as well the NUTELLA glass jars and other distinctive labels associated with the brand NUTELLA, instituted a suit against the manufacturers Abhimanyu Prakash and others (“Manufacturers”) after Ferrero came to know that the Manufacturers were commercially selling empty NUTELLA glass jars (“conflicting jars”) which were a near identical copy of their original NUTELLA glass jar. It was alleged by Ferrero that the Manufacturers’ conflicting jars were being manufactured and sold under the product description of ‘NUTELLA glass jar’ and the same were being purchased by third-parties to counterfeit NUTELLA products. Thus, the suit for trademark infringement and passing off was instituted before the Delhi High Court by Ferrero seeking a permanent injunction against the Manufacturers, thereby restraining them from the manufacture and sale of the conflicting jars.

ii. Arguments of Plaintiff and Defendants

Ferrero submitted before the Single Judge that the Manufacturers possessed both actual as well as constructive knowledge that they were infringing upon Ferrero’s registered trademark, and since they were in the same line of business for a considerable amount of time, they were not a first-time infringer.

On the other hand, the Manufacturers submitted that they are in the business of manufacturing generic empty glass jars, empty glass bottles and empty liquor bottles. They further stated that they did not manufacture NUTELLA’S plastic cap and only produced the plain unbranded glass jars on the orders of one of their clients, without embossing the Ferrero’s NUTELLA mark on any of the conflicting jars. The Manufacturers pleaded that they were first time innocent infringers and stated that acted in a bona fide manner while manufacturing the impugned jars.

iii. Decision of the Single Judge

The Single Judge of the Delhi High Court held that infringement had indeed taken place of the registered shape mark of Ferrero. It was found that the Manufacturers were not innocent infringers, but first-time knowing infringers. The Court observed that the original Nutella products have been available in the Indian market since 2009, and given the popularity of the product, there was no way that the Manufacturers were not aware of the same.

In light of the circumstances, the Single Judge granted a permanent injunction against the Manufacturers and restrained them from the manufacture and sale of the conflicting jars. Further, the Single Judge ordered that the conflicting jars be seized from the premises of the Manufacturers and handed over to Ferrero who may either use the conflicting jars for filling up its products or donate the conflicting jars to NGOs as a part of their CSR initiative.

With respect to the delivery of the infringing jars, the Manufacturers sought modification of the order and stated the conflicting jars could be used for storing other products such as pickle, honey, jams etc, instead of giving it to Ferrero. However, the Single Judge refused to modify the order and therefore the Manufacturers filed an appeal before the Division Bench of the Delhi High Court (“Division Bench”).

iv. Decision of the Division Bench

The Division Bench upheld the order rendered by the Single Judge and stated that since the conflicting jars were found to be infringing the registered shape mark of Ferrero, the remedy provided under Section 28(1)[4] read with Section 135 (1)[5] of the Act shall be followed. The Division Bench observed that the Section 28(1) of the Act equips the proprietor of a registered trademark with two rights; firstly, the right to the exclusive use of the trademark for the goods and services in respect of which trademark protection is sought; and secondly, the right to obtain relief against any act of infringement against their registered trademark. The Division Bench also noted that Section 135(1) of the Act provides that the infringing products be delivered to the registered proprietor for the purpose of destruction/erasure only.

In view of the statutory provisions, the Division Bench did not find merit in the appeal of the Manufacturers and instead modified the order of the Single Judge by ordering the delivery of the conflicting jars to Ferrero ‘for the purpose of destruction only’. The Division Bench further clarified that the conflicting jars shall not be used by Ferrero for any purpose, whether commercially or otherwise.

Godrej Consumer Products Ltd. v. Reckitt Benckiser India Pvt. Ltd.[6] (The Harpic Bottle Case before the Calcutta High Court)

i. Case Facts

Reckitt Benckiser India Private Limited (“Reckitt”) has been engaged in the business of manufacturing and sale of the product ‘Harpic Toilet Cleaner’ since 1984 and Godrej Consumer Products Ltd. (“Godrej”) has been selling the product ‘Spic Toilet Cleaner’ (“Spic product”) since October 2025.

In 2026, Reckitt instituted a suit against Godrej alleging that the advertisements of Godrej’s Spic product compare the Spic product with Harpic Toilet Cleaner product, and causes disparagement due to such advertising. Reckittalso added allegations of trademark infringement on the basis of their alleged statutory rights over the distinctive and unique shape of Harpic Toilet Cleaner’s bottle (the “Harpic Bottle”). Thereafter, Reckitt sought remedy of injunctions against product disparagement as well as trademark infringement by Godrej.

ii. Arguments of Plaintiff and Defendant

Reckittclaimed that they had launched their Harpic Toilet Cleaner product in 1984 and since then, have been using the Harpic Bottle shape and trade dress. It was also claimed by Reckittthat they had obtained design registration(s) for the Harpic Bottle shape, which had expired; however, they continued to enjoy registration over the said designs/ shape under the Act.

While contending disparagement of Harpic Product due to the advertisements of the Spic product, Reckitt also added allegations in their suit for injunction that Spic product was being sold in a bottle (“conflicting bottle”) which was confusingly similar to that of the Harpic Bottle. Thus, Reckitt claimed that Godrej had deliberately copied Reckitt’s trade dress, bottle shape and cap, in spite of being aware of their long-standing presence in the market.

On the other hand, Godrej strongly called out the statutory protection that Reckittonce enjoyed over the Harpic Bottle under the Design Act. As per Godrej, (a) the current trademark registration held by Reckittunder the Trademark Act was not in respect of the shape of the bottle; (b) Reckittonly enjoyed limited protection with respect to the device of the Harpic Bottle; and (c) such limited protection cannot be extended to the shape of the Harpic Bottle. Furthermore, Godrej also contended that the shape of the Harpic Bottle and the conflicting bottle had come to be commonly used in the industry, and has thus become generic.

On the point of disparagement of the Harpic Toilet Cleaner product through Spic product advertisements before the Single Judge, Godrej was ready to take down their advertisements and give an undertaking to Reckitt.

iii. Decision of the Single Judge

The Single Judge passed an order of ad interim injunction in favour of Reckittby holding that they had prima facie made a case of infringement of their Harpic Bottle. The Judge opined that the expiry of the design registration does not automatically extinguish the trademark rights/protection if the shape itself is a registered trademark. In this regard, the Judge relied upon the trademark registration of Reckitt which was applied to the Harpic Bottle, wherein the registration certificate depicted the Harpic Bottle from six-different angles. In light of such trademark registration, the Single Judge was of the view that the trademark protection was indeed extended to the shape of the Harpic Bottle and cap; and thus, Reckitt enjoyed rights over the same.

In view of the observation made by the Single Judge, it was held that conflicting bottle of Godrej was visually and strikingly similar to the Harpic Bottle and that the adoption of the conflicting bottle was in fact deliberate and intentional. On the basis of these reasonings, the Single Judge granted the temporary relief to Reckitt, instructing Godrej to stop any use of the conflicting bottle during the pendency of the suit.

Aggrieved by the order of interim relief against themselves, Godrej appealed before the Division Bench of the Calcutta High Court (“Division Bench”).

iv. Decision of the Division Bench

It was pointed out by Godrej that the main cause of action of Reckitt in their suit has been in respect to Spic Product’s advertisement, which displays comparison between the two products and shows Reckitt’s product allegedly disparagingly. In this regard, Godrej argued that Reckitt’sallegation of infringement of their Harpic Bottle mark was added subsequently as an ancillary prayer.

The Division Bench found merit in the argument and observed that the allegations with respect to trademark infringement were only added by Reckitt as an after-thought. The Division Bench further observed that since Godrej had withdrawn the disparaging advertisement, the primary grievance of Reckitt stood resolved.

With respect to allegations of trademark infringement by Reckitt, the Division Bench set aside the ad interim injunction order passed by the Single Judge and stressed that the trademark should be compared as a whole. Upon comparing both the products and trademarks as a whole, the Division Bench observed that (a) the conflicting bottle is black in colour, whereas, the Harpic Bottle is blue in colour; and (b) the design and cap of the bottles as well as the label on the bottles appeared completely different from each other.

While observing that the similarity only lay in the shape of the dispenser, the Division Bench also expressed doubt on whether a trademark registration over the Harpic Bottle label could indirectly revive Reckitt’s expired proprietorship rights over their design.

The Division Bench also directed both the parties to complete their pleadings in the suit matter before the Single Judge for the determination of issues at hand.

Conclusion and Analysis

Both the cases, when taken together, touch upon the evolving discussions around shape of products being protected or considered for protection as trademarks.

The Nutella Jar Case strongly emphasizes upon the need of the hour to extend rightful protection to shape marks as non-conventional trademarks. By following the statutory remedies provided under the Act, the Delhi High Court clearly showed that shape marks as brand identifiers are to be given the same importance (if not more) as that of word marks and logo marks. Separately, the Harpic Bottle Case represented a balanced approach taken by the Calcutta High Court towards granting protection to non-conventional trademarks.

Interestingly, apart from the common subject of product shapes as brand identifiers between the cases, the other point of commonality is the open but careful approach of the courts in dealing with such non-conventional trademark subjects.

On the one hand, the courts in the two matters showed receptivity to acknowledging non-conventional shape marks as brand identities; on the other, the Courts treaded with caution to ensure that protection and monopolies allowed over shape marks are well-justified under the law, and do not become excessive.

Contributed by: Aditi Verma Thakur and Doyita Mukherjee

[1] Section 2(1)(m), Trademarks Act, 1999

[2] Section 2(1)(zb), Trademarks Act, 1999

[3] Order dated 06.01.2026 in RFA(OS)(COMM) 1/2026 & CM APPL. 331/2026

[4] Section 28(1) of the Act grants the registered proprietor of a trademark the power to obtain relief for infringement, besides the exclusive right to use the mark.

[5] Section 135 of the Act outlines the civil remedies available in a suit for trademark infringement or passing off. It empowers courts to grant relief, including injunctions, damages, or account of profits, and destruction of infringing goods. This applies to registered trademarks (infringement) and common law rights (passing off).

[6] Order dt. 27.02.2026 in TEMPAPO-IPD/2/2026, with IP.COM/3/2026, IA NO. GA-COM/1/2026