The plaintiffs, part of the globally renowned Ferrero Group, initiated a suit seeking a permanent injunction against the defendant, M.B. Enterprises, for trademark infringement, passing off, delivery up, and damages in relation to their registered trademark ‘NUTELLA’. Ferrero first adopted the ‘NUTELLA’ mark in 1964 and has continuously used it in India since at least 2009, if not earlier. The mark enjoys global recognition and is registered under multiple classes in India dating back to 1975.
Following a raid by the Food & Drug Administration in Maharashtra in October 2021, it was discovered that the defendant was engaged in the large-scale manufacture and sale of counterfeit ‘NUTELLA’ hazelnut cocoa spread under unhygienic conditions. Approximately 9,53,400 units of fake product and over 4,00,000 units of counterfeit packaging were seized. The plaintiffs were notified by the FDA and thereafter filed the present suit. Despite being duly served, the defendant did not appear or file a written statement and was proceeded ex parte.
The core dispute in the suit was whether the defendant's actions amounted to trademark infringement and passing off of the plaintiffs’ ‘NUTELLA’ mark, including trade dress and packaging elements that closely resembled the original. The plaintiffs also sought a declaration that ‘NUTELLA’ is a well-known trademark under Section 2(zg) of the Trade Marks Act, 1999.
The Court examined the evidence on record, including registration certificates, global and Indian sales figures, advertisement expenses, and documentation of the FDA raid. The Court found that the plaintiffs had a well-established statutory and proprietary right over the ‘NUTELLA’ trademark and associated trade dress. The defendant’s use of an identical name, packaging, and trade dress without authorization indicated a clear mala fide intent to deceive consumers and capitalize on the goodwill of the plaintiffs. Given the product’s edible nature and risk to public health, the Court invoked a heightened standard of scrutiny, relying on precedents such as Cadila Health Care Ltd. v. Cadila Pharmaceuticals (2001) and Dominos IP Holder LLC v. MS Domnick Pizza (2023).
The Court decreed the suit in favour of the plaintiffs. A permanent injunction was granted restraining the defendant and all persons acting on its behalf from using the ‘NUTELLA’ trademark or any deceptively similar marks, labels, or trade dress. The Court awarded ₹30,00,000 as damages and an additional ₹2,00,000 in costs payable to the Delhi High Court Bar Association Lawyers Social Security and Welfare Fund. Furthermore, the Court formally declared ‘NUTELLA’ as a well-known trademark under Section 2(zg) of the Trade Marks Act, 1999, based on long-standing use, promotional activity, sales figures, and global recognition.
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