Ferrero Spa & Ors. Vs . Abhimanyu Prakash

Supply Chain Liability in Counterfeit Markets:

Introductory Note:This case concerns the global confectionery brand Ferrero Spa, the manufacturer and trademark owner of the iconic hazelnut cocoa spread sold under the well-known brand NUTELLA, and its legal action against entities engaged in manufacturing and distributing empty glass jars deceptively similar to the original Nutella jars. The dispute arose when Ferrero discovered that the defendants were selling look-alike Nutella jars, thereby facilitating counterfeiting and causing damage to the brand’s trademark, goodwill, and market reputation. The Delhi High Court examined not only the aspect of trademark infringement but also whether the circumstances warranted awarding damages and legal costs in addition to a permanent injunction.

Factual Background:Ferrero Spa and its associated plaintiffs are part of the world-renowned Ferrero Group, established in 1946, and they launched the NUTELLA brand in 1964 along with the exclusive configuration of the Nutella glass jar consisting of a unique shape, logo and trade dress. The plaintiffs have maintained uninterrupted usage of these trademarks internationally and in India for over five decades, and hold multiple registrations including registration of the shape of the Nutella jar itself.

The plaintiffs discovered in October 2022 that defendants 1 to 3, based in Firozabad, were manufacturing and selling empty glass jars identical to Nutella jars on online platforms, including IndiaMart and the website of defendant no. 4. The jars were marketed using the product description "Nutella glass jars", and carried embossing identical to those recovered in earlier cases concerning counterfeit Nutella products. The plaintiffs contended that the defendants were knowingly aiding the counterfeit market by supplying these jars.

Procedural History:The suit was instituted as CS(COMM) 65/2023, and ex-parte ad-interim injunctions were granted on 06.02.2023 and 08.02.2023 restraining defendants from dealing in Nutella glass jars. Local Commissioners were appointed and seized 3,05,916 infringing jars from the premises of defendants 1 to 3.

Defendants first opposed the claims and filed written statements; however, in August 2025 they conceded to the plaintiffs’ proprietary rights and did not contest the grant of permanent injunction. Mediation was attempted but failed. Plaintiffs thereafter filed an application seeking summary judgment under Order XIII-A CPC. Damages and legal costs were pressed only against defendants 1 to 3 and not against defendant 4.

Core Dispute:The core dispute before the Court was not whether the defendants were infringing the plaintiff’s trademarks, because the defendants ultimately did not contest this point. The question before the Court was whether the plaintiffs were entitled to monetary damages and litigation costs in addition to permanent injunction, and whether defendants could seek protection as “first-time innocent infringers”. The Court had to evaluate whether the facts attracted compensatory or punitive remedies under intellectual property jurisprudence.

Detailed Reasoning: The Court began by confirming that the plaintiffs possess registered proprietary rights in the Nutella trademarks and the registered shape mark of the Nutella jar. The defendants were found to have sold empty glass jars in sizes identical to those of the plaintiffs and marketed them online as “Nutella glass jars”. The Local Commissioners found over three lakh such jars, which defendants did not dispute.

When defendants later chose not to contest the injunction, the scope of dispute was narrowed to damages and legal costs. The Court examined whether the circumstances justified relief under Order XIII-A CPC, which empowers commercial courts to decide disputes summarily where the defendant has no real prospect of defending the case. The Delhi High Court relied on the earlier judgment in Su-Kam Power Systems Ltd. v. Kunwer Sachdev to reiterate that trials are not mandatory where evidence and pleadings provide sufficient material to adjudicate.

To determine damages, the Court considered Rule 20 of the Delhi High Court IPR Division Rules 2022, which allows the Court to award compensatory, exemplary, or punitive damages in intellectual property cases based on the nature of infringement. The plaintiffs calculated the defendants’ turnover of empty jars at more than ₹18 crore and the market value of counterfeit finished products at ₹533 crore to justify damages of ₹53 crore. However, the Court noted that these calculations were not pleaded earlier and there was no direct evidence linking the defendants to sale of counterfeit Nutella products, even though the embossing on jars created suspicion.

The Court rejected the defendants' plea of being “first-time innocent infringers”. The Court reasoned that the manufacturing process, the email containing jar specifications labelled “Nutella cocoa jar”, online product descriptions, and the large scale of production showed that defendants knowingly infringed, thereby distinguishing this case from Koninlijke Philips v. Amazestore and Aero Club v. Sahara Belts, where defendants demonstrated bona-fide conduct.

However, the absence of proof that defendants were involved in selling counterfeit finished products prevented the Court from accepting the ₹53 crore damages claim. To balance deterrence with fairness, the Court decided not to undertake a detailed turnover estimation. Instead, it adopted an equitable principle: awarding partial legal costs and depriving defendants of the large stock of infringing inventory seized from their premises. This approach both punishes deliberate infringers and prevents unjust enrichment.

Decision:The Delhi High Court decreed the suit in favour of the plaintiffs and granted permanent injunction restraining all defendants from manufacturing, offering for sale or selling Nutella glass jars or any similar product. Defendants 1 to 3 were directed to deliver all seized jars to the plaintiffs within two weeks, allowing plaintiffs to dispose of them as desired, including charitable use under CSR. All remaining infringing packaging was ordered to be destroyed under supervision.

Defendants 1 to 3 were directed to pay ₹10 lakh towards legal costs within four weeks, failing which interest at 12% per annum would apply. Damages for counterfeiting finished products were not granted due to lack of supporting evidence. Relief regarding declaration of Nutella as a “well-known mark” was reserved for separate proceedings.

Concluding Note:This judgment demonstrates the evolving approach of Indian commercial courts toward intellectual property disputes. The decision reflects a balanced path: strict protection of proprietary rights with remedies tailored to the degree and nature of infringement. While the Court did not award astronomical damages without concrete evidence, it still ensured deterrence by granting permanent injunction, substantial legal costs, and forfeiture of infringing inventory worth more than ₹62 lakh. The judgment reinforces that ignorance cannot be claimed where infringement is knowing and deliberate. It emphasises that intermediaries supporting counterfeit supply chains, even indirectly, cannot escape legal responsibility.

Case Title: Ferrero Spa & Ors. Vs. Abhimanyu Prakash & Ors.

Case Number: CS(COMM) 65/2023

Order Date: 19 November 2025

Neutral Citation: 2025:DHC:10308

Court: High Court of Delhi at New Delhi

Hon’ble Judge: Justice Manmeet Pritam Singh Arora

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By:Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

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Ferrero Spa & Ors. Vs . Abhimanyu Prakash & Ors., CS(COMM) 65/2023, Decided on 19 November 2025, by Hon'ble Justice Manmeet Pritam Singh Arora, High Court of Delhi

In a significant move strengthening trademark and trade dress protection in India, the Delhi High Court has permanently restrained the defendants from manufacturing and selling empty glass jars deceptively similar to the iconic Nutella jar owned by Ferrero Spa. The Court held that the defendants were knowingly producing and marketing look-alike “Nutella glass jars” without authorization and offering them for sale online, resulting in clear infringement of Ferrero’s registered trademarks.

The Court noted that over 3,05,000 infringing empty glass jars were seized from the defendants during court-appointed raids. The defendants, after initial resistance to the suit, later conceded to the permanent injunction. While Ferrero sought substantial damages, including loss based on counterfeit finished products, the Court found no direct evidence linking the defendants to the sale of counterfeit Nutella goods. However, the Court held that the defendants could not be treated as “innocent first-time infringers” given their deliberate imitation and commercialization of the Nutella jar design.

Consequently, the Court not only made the injunction absolute but also imposed partial legal costs of ₹10 lakhs upon defendants 1 to 3 and directed them to hand over the entire stock of seized infringing jars to Ferrero within two weeks, warning that failure to pay costs within four weeks would attract 12% interest per annum.

The ruling is notable for applying the summary judgment mechanism under Order XIII-A CPC along with Rule 20 of the Delhi High Court IPD Rules, 2022, to grant timely relief without a full trial, reinforcing judicial intolerance toward deliberate trade dress imitation and its role in facilitating counterfeit markets.

Disclaimer: This is for general information only and should not be construed as legal advice as it may contain human errors in perception and presentation: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi.