The Delhi High Court granted broad civil and financial reliefs in a trademark suit brought by the plaintiffs, Ferrero SPA and group companies, against the defendant, and conclusively declaring the ‘NUTELLA’ trademark a ‘well-known’ mark in India under the Trade Marks Act, 1999.
The dispute arose when FDA raids in October 2021 at the defendant’s Thane facility uncovered nearly 1 million units of counterfeit product and related materials, with operations being run without authorization. The plaintiffs (though their Indian entity) having distributed Nutella since 2009 along with earlier presence via other channels, sought a permanent injunction against trademark infringement, passing off, delivery up, as well as damages.
Despite being served, the defendant never entered appearance or filed a written statement, leading the court to proceed ex parte.
The Bench comprising Justice Saurabh Banerjee reviewed Ferrero’s global and Indian brand presence, dating back to Nutella’s global launch in 1964 and Indian market roots since at least 1975 (date of trademark registration). The Court found took note of Nutella’s unique branding, packaging, and advertising; huge sales and advertising spends in India; numerous global recognitions as a well-known mark; and its Indian trademark registrations across multiple classes. The Court, emphasizing the consumer protection aspect of the case, observed that infringing acts with food items demand a heightened standard of scrutiny due to risks to public health.
The Court found that the defendant’s acts amounted to infringement and passing off, designed to ride on Nutella’s longstanding goodwill and deceive the public. Holding that such conduct was mala fide and dangerous, the court granted a permanent injunction, restraining the defendant from manufacturing, distributing, or selling any Nutella-branded or deceptively similar products.
Applying Section 2(zg) of the Trade Marks Act, the Court declared ‘NUTELLA’ a ‘well-known trademark’ in India, citing its long-standing recognition, registration history, extensive use and promotion, and prior recognition from international IP organizations. Significant damages of Rs. 30 lakhs were awarded to the plaintiffs, along with Rs. 2 lakhs in legal costs.
Appearances:
Plaintiffs: Mr. Pravin Anand, Ms. Vaishali R Mittal and Mr. Shivang Sharma, Advs.