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.<\/p>\n
Ferrero S.P.A. and its group companies (collectively, \u201cFerrero\u201d) 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, \u201cthe appellants\u201d), 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.<\/p>\n
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.<\/p>\n
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 \u201cNutella glass jars,\u201d 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.<\/p>\n
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 \u201cfor purposes of erasure or destruction\u201d 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.<\/p>\n
In view of the observations and the arguments presented by both the parties, the Delhi High Court held that:<\/p>\n