Trademark Law | Delhi HC Declares 'Nutella' a Well-Known Mark | Slams Sale of Counterfeit Spread as Public Health Threat and Brand Dilution
Safiya Malik
The High Court of Delhi Single Bench of Justice Saurabh Banerjee granted a decree of permanent injunction restraining the defendant from manufacturing, supplying, distributing, selling, advertising, or dealing in counterfeit goods bearing the trademark 'NUTELLA' or any similar mark. The court directed the defendant, its affiliates, representatives, and agents to immediately cease all infringing activities. It further awarded Rs.30 lakhs in damages to the plaintiffs and imposed special costs of Rs.2 lakhs payable to the Delhi High Court Bar Association Lawyers Social Security and Welfare Fund. In addition, the court declared the plaintiffs' trademark 'NUTELLA' a well-known trademark under Section 2(zg) of the Trade Marks Act, 1999. The declaration followed a detailed evaluation of the plaintiffs' long-standing use, global presence, extensive marketing efforts, and consistent judicial recognition. The court observed that the defendant's actions of using identical packaging and trade dress without consent reflected a clear mala fide intent to ride on the plaintiffs' reputation. The final relief was granted following the ex parte proceedings as the defendant failed to appear or contest the claims despite being duly served.
The plaintiffs, members of the globally recognized Ferrero Group, filed a commercial suit seeking a decree of permanent injunction, delivery up, damages, and declaration of their trademark 'NUTELLA' as well-known. The plaintiffs include global entities and Ferrero India Private Limited. The plaintiffs-initiated proceedings against M.B. Enterprises, alleging infringement and passing off of their registered trademark 'NUTELLA' and its associated trade dress.
The trademark 'NUTELLA' was first adopted by the plaintiffs in 1964 for their hazelnut cocoa spread. The product, sold in distinctive wide-necked glass jars with white caps and a unique color-coded label, gained global popularity and is now present in over 170 countries. The plaintiffs asserted that they have been operating in the Indian market through plaintiff no.3 since at least 2009 and had longstanding sales and advertisement presence in India even before that. The product completed 50 years of global presence in 2014.
To protect their intellectual property rights, the plaintiffs secured trademark registrations for 'NUTELLA' and its variants across various classes, including but not limited to Classes 3, 5, 7, 8-12, 14-16, 18, 20-21, 24-28, 30-31, 34, 38-39, and 43. The earliest registration dated back to January 28, 1975. The plaintiffs presented documentary evidence of multiple registrations, applications, and granted protections.
The cause of action arose when the plaintiffs received a communication dated October 29, 2021, from Dr. R.D. Munde, Food Safety Officer under the Food & Drug Administration (FDA), requesting plaintiff no.3's representatives to appear in relation to a raid conducted earlier that month. The raid revealed that the defendant was manufacturing and selling counterfeit 'NUTELLA' products under unhygienic conditions at its premises in Wagle Estate, Thane, Maharashtra. During the raid, the FDA seized 9,53,400 units of counterfeit products and 4,00,000 units of packaging materials, including bottles, labels, and lids bearing the 'NUTELLA' mark.
Upon investigation, the plaintiffs discovered that the defendant was manufacturing hazelnut cocoa spread using the identical name 'NUTELLA FERRERO' and packaging that mirrored the plaintiffs' registered trade dress. The defendant allegedly intended to deceive the public and pass off counterfeit products as genuine. The plaintiffs asserted that the defendants used identical labels, packaging, trade dress, and name without any authorization, which, according to the plaintiffs, amounted to infringement and passing off under the Trade Marks Act, 1999.
The plaintiffs submitted that such counterfeit products not only diluted their brand and goodwill but also posed a significant health risk due to the unhygienic manufacturing practices. They stressed that 'NUTELLA' was a household name recognized globally and in India, supported by widespread advertisement and sales figures. In financial years 2020-21, 2021-22, and 2022-23, the plaintiffs spent Rs.3 crore, Rs.7 crore, and Rs.16 crore respectively on advertisements and achieved gross sales of Rs.233 crore, Rs.145 crore, and Rs.106 crore in the Indian market.
Despite the issuance of summons, the defendant failed to enter appearance or file a written statement. Consequently, the court closed the right to file the written statement and proceeded ex parte against the defendant. The ex parte injunction granted on November 24, 2021, was made absolute on November 20, 2023.
The plaintiffs then filed an application under Order VIII Rule 10 of the CPC seeking summary judgment. The relief sought included permanent injunction, delivery up of infringing material, damages, declaration of 'NUTELLA' as a well-known trademark, and litigation costs.
The plaintiffs relied on recognition by international organizations such as the World Intellectual Property Organization (WIPO) and the International Trademark Association (INTA), which had acknowledged 'NUTELLA' as a well-known trademark. They further stated the distinctiveness and recognition associated with the mark due to its long-standing use, wide geographical reach, and successful enforcement.
The Court recorded that since the defendant failed to appear or file a response despite due service, the "averments made by the plaintiffs herein being without any response/ denial, are deemed admitted as true and correct."
The Court noted that the plaintiffs are "the registered proprietors of the trademark 'NUTELLA'/ and its variations under various Class(es)" with registrations dating back to 1975.
The Court observed: "It is so shocking that the defendant was using the identical name, identical packaging, identical labels, identical trade dress without any authorisation/ permission/ consent of the plaintiffs."
The judgment further stated: "This clearly shows the mala fide intent of the defendant as it was/ is guilty of using the registered trademarks of the plaintiff and clandestinely carrying on manufacturing/ offering/ selling/ marketing the impugned products with an intent to somehow reflect that it was the plaintiffs and/ or connected with them in some manner as also to ride upon the well-established goodwill and reputation of the plaintiffs."
Regarding the nature of the goods, the Court noted: "The acts of the defendant raises alarming bells as the product involved herein are edible items, which are consumed by all sections of the society, especially, children."
It further recorded: "If not stopped, the same can cause serious public harm. This can also result in dilution of the long-standing reputation and goodwill of the plaintiffs."
The Court cited precedents, including Cadila Health Care Limited Vs Cadila Pharmaceuticals, noting that although the case pertained to pharmaceutical products, the analogy applies equally to food items. The Court stated: "This Court while dealing with edible items for human consumption, owes a duty of exercising a greater degree of care, caution as also to apply a more stringent test to avoid any possibility/ likelihood of confusion."
Referring to a previous judgment in Dominos IP Holder LLC vs. MS Domnick Pizza, the Court reiterated: "Where the marks in question pertain to food items, or eateries where food items are dispensed and served, a somewhat higher degree of care and caution is expected to be observed."
On the issue of damages, the Court noted the plaintiffs' claim that the value of seized counterfeit goods was approximately Rs.38.29 crores. The Court held: "Taking the aforesaid into consideration and taking a lenient view, in the considered opinion of this Court, the plaintiff is cumulatively entitled to a sum of Rs.30,00,000/- (Thirty Lacs Only) towards damages of the present proceedings."
On the declaration of 'NUTELLA' as a well-known trademark, the Court reviewed Section 2(zg) and Section 11(6) of the Trade Marks Act and recorded: "The plaintiffs have been continuously and uninterruptedly using the said mark(s) 'NUTELLA'/ since and from 1946 and have valid and subsisting registration thereof from the year 1975."
The Court further stated: "By virtue of its long-standing use, extensive marketing, and unique trade dress, 'NUTELLA'/ has become synonymous to a thick creamy hazelnut cocoa spread."
On reviewing advertising expenses and sales, the Court stated: "The plaintiffs have spent Rs.3 Crore, Rs.7 Crore and Rs.16 Crores from the financial years 2020-21, 2021-22 and 2022-23 respectively as also had gross sales figures of Rs.233 Crores, Rs.145 Crores and Rs.106 Crores for the financial years 2020-21, 2021-22 and 2022-23 respectively."
The Court permanently restrained the defendant, stating: "The defendant, its partners, proprietors, sister-concerns, affiliates, franchisees, officers, servants, agents, distributors, stockists, representatives, licensees and anyone acting for or on their behalf directly or indirectly, as the case may be, are permanently restrained from manufacturing, packaging, supplying, distributing, selling, offering for sale, advertising, and dealing in any manner whatsoever with counterfeit 'NUTELLA' or any product not emanating from the plaintiffs or their authorised distributors and bearing the trademark 'NUTELLA', , , or any other mark, trade dress identical or similar to the plaintiffs 'NUTELLA' trademarks thereby amounting to infringement of the plaintiffs' trademarks and passing off."
On the issue of damages, the Court stated: "In the considered opinion of this Court, the plaintiff is cumulatively entitled to a sum of Rs.30,00,000/- (Thirty Lacs Only) towards damages of the present proceedings."
Regarding costs, the Court directed: "The defendant is also burdened with costs and special costs of Rs.2,00,000/- (Rupees Two Lacs Only) payable to Delhi High Court Bar Association Lawyers Social Security and Welfare Fund [A/C 155530100009730; IFSC UCBA0001553] within six weeks from today."
Concerning the trademark status, the Court declared: "The plaintiffs have been able to cross the threshold of their registered trademarks 'NUTELLA'/ being declared as 'well-known trademark' as per Section 2(zg) of the Act." It added: "This Court has no hesitation in declaring the trademarks 'NUTELLA'/ of the plaintiffs as 'well-known trademark' respectively under Section 2(zg) of the Act."
The suit and pending applications were disposed of accordingly.
Advocates Representing the Parties:
For the Petitioners: Mr. Pravin Anand, Ms. Vaishali R Mittal and Mr. Shivang Sharma, Advocates
Case Title: Ferrero SPA & Ors v. M.B. Enterprises
Neutral Citation: 2025: DHC:6128
Case Number: CS(COMM) 593/2021
Bench: Justice Saurabh Banerjee
