Ferrero S.p.A., part of the Ferrero Group, founded in 1946, owns global rights to the \u2018NUTELLA\u2019 brand for its hazelnut cocoa spread. The mark, adopted in 1964, is registered in India across numerous classes, with the earliest dating to 1975.<\/p>\n
In 2021, Ferrero learned that M.B. Enterprises was manufacturing counterfeit \u2018NUTELLA\u2019 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.<\/p>\n
Ferrero argued it was the prior adopter and registered proprietor of \u2018NUTELLA\u2019, 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.<\/p>\n
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.<\/p>\n
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.<\/p>\n
Firstly, the Court observed that M.B. Enterprises had not appeared or filed a defense, and the plaintiffs\u2019 allegations were deemed admitted. It held that Ferrero owned valid and subsisting registrations for \u2018NUTELLA\u2019 across multiple classes since 1975.<\/p>\n
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.<\/p>\n
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<\/p>\n
On Ferrero\u2019s prayer for the declaration of \u2018NUTELLA\u2019 marks as a well-known mark, the Court reviewed Ferrero\u2019s 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 \u2018\u2018well-known trademark\u201d 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.<\/p>\n
The Court:<\/p>\n