Summary
The Delhi High Court has ruled in favor of Ferrero S.p.A. in a trademark infringement case against M.B. Enterprises, declaring ‘NUTELLA’ a well-known trademark and awarding ₹30 lakh in damages. The Court also issued a permanent injunction against the counterfeit production and emphasized the heightened duty of care in cases involving food products.
Background & Facts
Ferrero S.p.A., part of the Ferrero Group, founded in 1946, owns global rights to the ‘NUTELLA’ brand for its hazelnut cocoa spread. The mark, adopted in 1964, is registered in India across numerous classes, with the earliest dating to 1975.
In 2021, Ferrero learned that M.B. Enterprises was manufacturing counterfeit ‘NUTELLA’ under unsanitary conditions, following a raid by the Food and Drug Administration (FDA) in Maharashtra. Nearly 1 million fake units and 4,00,000 counterfeit packaging materials were seized. Ferrero, therefore, initiated a suit for infringement, passing off, and damages.
Issues before the Court
-
-
- Whether the defendant’s activities amounted to infringement and passing off of the registered ‘NUTELLA’ trademarks.
- Whether Ferrero’s ‘NUTELLA’ mark qualified as a well-known trademark under Section 2(zg) of the Trade Marks Act.
-
Ferrero’s case
Ferrero argued it was the prior adopter and registered proprietor of ‘NUTELLA’, with longstanding use, global recognition, and extensive Indian presence since at least 2009. Ferrero claimed that it had been present in the Indian market through various channels for much longer and had celebrated 50 years of its presence in the Indian market in 2014.
Ferrero alleged that the defendants were supplying, distributing, and selling low-quality, fake, and spurious ‘NUTELLA’ with identical marks and packaging in an attempt to mislead consumers. This not only tarnished the NUTELLA mark but also posed a major health risk to the consumers.
Ferrero also submitted that ‘NUTELLA’ trademarks had been declared as well-known by the World Intellectual Property Organization (WIPO) and the International Trademark Association (INTA). In view of the same, Ferrero sought ‘NUTELLA’ to be declared as a well-known trademark under Section 2(zg)4 of the Trade Marks Act.
Court’s Analysis and Findings
Firstly, the Court observed that M.B. Enterprises had not appeared or filed a defense, and the plaintiffs’ allegations were deemed admitted. It held that Ferrero owned valid and subsisting registrations for ‘NUTELLA’ across multiple classes since 1975.
The Court noted that when the Food and Drug Administration (FDA) conducted a raid at the premises of the defendant, large quantities of counterfeit ‘NUTELLA’, labels, empty jars, etc, were seized. The court stated that it was shocked to learn that the defendant was using the identical name, identical packaging, identical labels, and identical trade dress without any authorization/ permission/ consent of the plaintiffs, clearly establishing mala fide intent.
The Court strongly observed that while dealing with edible items for human consumption, it was under a serious duty of exercising a greater degree of care and caution as well as to apply a more stringent test to avoid any possibility/ likelihood of confusion between different edible products amongst the general public. Citing Cadila Health Care v. Cadila Pharmaceuticals, the Court reiterated the heightened duty of care where food products are involved
On Ferrero’s prayer for the declaration of ‘NUTELLA’ marks as a well-known mark, the Court reviewed Ferrero’s longstanding and extensive use, advertising spend, and market presence. The court also noted that the marks had already acquired distinctiveness and secondary meaning, along with being recognized as a ‘‘well-known trademark” by organizations such as WIPO and INTA. The Court therefore had no hesitation in declaring the ‘NUTELLA’ marks as a ‘well-known trademark’ under Section 2(zg) of the Act.
Decision
The Court:
-
-
- Granted a permanent injunction restraining the defendant from using the ‘NUTELLA’ mark or similar variants.
- Awarded Ferrero ₹30 lakhs in damages and ₹2 lakhs in costs.
- Declared ‘NUTELLA’ a well-known trademark under Section 2(zg)
-
Citation: Ferrero S.p.A. & Ors v. M.B. Enterprises, CS(COMM) 593/2021, Delhi High Court, decided on July 28, 2025. Available on https://indiankanoon.org/doc/188981518/
