Summary
Ferrero S.P.A. and its group companies sued a set of glass jar manufacturers and an e-commerce seller before the Delhi High Court, alleging that empty glass jars shaped and marketed as “Nutella jars” infringed Ferrero's registered NUTELLA trademarks. A single judge summarily decreed the suit, holding the manufacturers to be knowing infringers and directing that over three lakh seized jars be handed to Ferrero, with limited discretion over their end use. On appeal, the Delhi High Court's Division Bench upheld the infringement finding but narrowed the relief, holding that the jars could only be destroyed and not repurposed. The ruling matters because it draws a sharp line around what a trademark owner may do with delivered-up infringing goods under the Trade Marks Act.
Background
Over three lakh glass jars, each carrying the unmistakable silhouette of a well-known chocolate spread container, sat seized in a warehouse while two companies argued over their fate. The dispute was not about what was inside the jars, since the jars were empty, but about the jars themselves and whether their very shape infringed a registered trademark.
Ferrero S.P.A. and its group companies (collectively, “Ferrero”) own registered trademarks for NUTELLA, including a registered shape mark covering the distinctive Nutella glass jar, sold in India since 2009 across multiple sizes. Ferrero sued Mr. Abhimanyu Prakash and other associated manufacturers (collectively, “the appellants”), who made and sold empty glass jars in near-identical dimensions to the Nutella jar, along with a fourth defendant who offered these jars for sale on e-commerce platforms. In February 2023, the Delhi High Court granted an ex-parte ad-interim injunction and appointed Local Commissioners, who seized over three lakh jars from the appellants’ premises. The injunction was made absolute by consent in August 2025. On 19 November 2025, a single judge summarily decreed the suit, and a subsequent modification application was dismissed on 8 December 2025. The appellants challenged both orders before the Division Bench, but only on the limited question of what should happen to the seized jars.
Issues
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- Whether the single judge’s judgment dated 19 November 2025 contained a positive finding that the seized jars were infringing goods, or whether the appellants were wrongly treated as infringers without such a finding.
- Whether the direction permitting Ferrero to retain the seized jars for its own use, including filling them with its products or donating them for CSR purposes, was consistent with the delivery-up remedy under Section 135 of the Trade Marks Act, 1999 (“Trade Marks Act”).
Appellants’ Arguments
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- Paragraphs 33 and 34 of the single judge’s judgment record that no adverse inference could be drawn connecting the appellants to counterfeit finished products sold by other parties, which the appellants read as an absence of any clear infringement finding against them.
- The seized jars were ordinary glass containers capable of use for honey, jam, or pickles, so handing them to Ferrero for its own use or destruction served no purpose and caused disproportionate loss.
- The appellants argued they were first-time innocent infringers, relying on the principle discussed in Koninlijke Philips and Ors. v. Amazestore and Ors. (2019 SCC OnLine Del 8198), and had not filed evidence to counter this only because the plea was a bona fide industry practice, not deliberate copying.
Ferrero’s Arguments
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- Paragraphs 15 to 18 and 30 to 37 of the single judge’s judgment record clear findings that the jars were deceptively similar to the registered Nutella shape mark and that the appellants were conscious of Ferrero’s goodwill, given their own website described the jars as “Nutella glass jars.”
- The appellants filed no evidence to substantiate their claim that empty Nutella-shaped jars are a generic industry term, undermining the innocent-infringer defence.
- Section 135(1) of the Trade Marks Act entitles a registered proprietor to delivery up of infringing goods for erasure or destruction, and Ferrero had specifically prayed for this relief in the plaint.
Court’s Analysis
The court observed that the single judge’s findings in paragraphs 30 to 37 of the judgment dated 19 November 2025 unambiguously held the seized jars to be infringing and treated the appellants as first-time knowing infringers, not innocent ones. The court noted that the appellants had not challenged this finding on merits before the Division Bench, having confined their earlier modification application only to the direction on release of the jars. This distinction proved decisive: the court held that a party cannot selectively contest the consequences of a finding while leaving the finding itself unchallenged, and so the infringement finding had attained finality in the Nutella jar trademark infringement proceedings.
Turning to the appellants’ reliance on the innocent-infringer defence, the court reasoned that the single judge had already rejected this plea, given the appellants’ own marketing of the jars as “Nutella glass jars,” their commercial scale of operations, and the absence of evidence supporting an industry-wide generic usage. The court further observed that Ferrero’s continuous presence in the Indian market since 2009 made the appellants’ claimed ignorance of Ferrero’s proprietary rights difficult to accept.
On the central question of relief, the court examined Section 28(1) of the Trade Marks Act, which confers on a registered proprietor both the exclusive right to use the mark and the right to obtain relief against infringement, and read it alongside Section 135(1), which lists delivery up of infringing goods “for purposes of erasure or destruction” among the available reliefs. The court held that once goods are found infringing, the consequence under these provisions is direct: delivery up may only serve the purpose of erasure or destruction, not any other commercial or charitable use. Applying this reasoning, the court found that permitting Ferrero to fill the jars with its own products or donate them for CSR purposes exceeded what Section 135(1) authorises, even though the underlying motive was benign. The court accordingly modified the single judge’s directions to confine the outcome strictly to destruction, while noting Ferrero’s counsel had already undertaken to destroy the jars rather than repurpose them. This aspect of the Nutella jar trademark infringement dispute illustrates how remedial provisions can cabin even a successful plaintiff’s options over seized goods.
Findings
In view of the observations and the arguments presented by both the parties, the Delhi High Court held that:
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- The seized glass jars were infringing goods, and the appellants were first-time knowing infringers rather than innocent ones, a finding that had attained finality since it was not separately challenged.
- The direction requiring the appellants to hand over the seized jars to Ferrero was upheld, along with the direction on payment of partial legal costs.
- The earlier direction permitting Ferrero to use the jars for its own products or CSR donation was modified, restricting Ferrero to destroying the jars alone, in line with Section 135(1) of the Trade Marks Act.
- The destruction was directed to take place on 17 January 2026, with the appellants entitled to have a representative present.
- The appeal stood disposed of on these limited terms, with no further relief granted to either side.
Case citation: Mr. Abhimanyu Prakash & Ors. v. Ferrero S.P.A & Ors., RFA(OS)(COMM) 1/2026, Delhi High Court, decided on 6 January 2026. Available at https://indiankanoon.org/doc/135313265/.
Authored by Gaurav Mishra, IP Attorney, BananaIP Counsels