Delhi High Court Declares 'NUTELLA' a Well-Known Trademark Under S. 2(zg) of Trade Marks Act; Imposes ₹32 Lakh in Damages & Costs on Counterfeiter - 2025-09-19

Delhi High Court Declares 'NUTELLA' a Well-Known Trademark, Slams Counterfeiter with ₹32 Lakh Penalty

New Delhi: The Delhi High Court, in a significant ruling, has declared the trademark 'NUTELLA' as a "well-known trademark" under the Trade Marks Act, 1999. Hon'ble Mr. Justice Saurabh Banerjee delivered a summary judgment in favor of Ferrero Spa, the owner of the iconic hazelnut cocoa spread, granting a permanent injunction against a Maharashtra-based entity, M.B. Enterprises, for manufacturing and selling counterfeit 'NUTELLA' products. The court also imposed damages and costs totaling ₹32 lakhs on the defendant.

Background of the Case

The lawsuit was initiated by Ferrero Spa after it was alerted by the Food & Drug Administration (FDA) in Maharashtra. In October 2021, the FDA conducted a raid on the premises of M.B. Enterprises in Thane and discovered a large-scale operation manufacturing counterfeit 'NUTELLA' under unhygienic conditions. The raid resulted in the seizure of approximately 9,53,400 units of the fake product and 4,00,000 units of packaging material, including identical labels, bottles, and lids.

Despite being served with the court summons, M.B. Enterprises failed to appear or file a written statement. Consequently, the court proceeded ex-parte against the defendant and, based on the plaintiff's application, passed a summary judgment under Order VIII Rule 10 of the Civil Procedure Code, 1908.

Plaintiff's Arguments

Representing Ferrero, Advocate Pravin Anand argued that 'NUTELLA', first adopted in 1964, has acquired immense global goodwill and reputation. He highlighted that the defendant was using a trademark, packaging, and trade dress identical to Ferrero's, with the clear intent to deceive consumers and illegally profit from the brand's established reputation.

The plaintiff's counsel emphasized that such counterfeiting of an edible product not only dilutes the brand's value but also poses a significant health risk to the public, especially children. They presented evidence of extensive use, promotions, and sales figures running into crores of rupees in India, alongside prior recognitions of 'NUTELLA' as a well-known mark by international bodies like the World Intellectual Property Organization (WIPO) and the International Trademark Association (INTA).

Court's Analysis and Decision

Justice Saurabh Banerjee found the defendant's actions to be a clear case of trademark infringement and passing off, noting that the identical packaging and branding demonstrated a clear mala fide intent. The court expressed grave concern over the public health risk posed by the counterfeit edible products.

“The acts of the defendant raises alarming bells as the product involved herein are edible items, which are consumed by all sections of the society, especially, children... If not stopped, the same can cause serious public harm. This can also result in dilution of the long-standing reputation and goodwill of the plaintiffs.”

The judgment cited the Supreme Court's precedent in Cadila Health Care Limited vs. Cadila Pharmaceuticals , extending the principle of applying a stricter test for confusing similarity from pharmaceuticals to food items, where public health is at stake.

The court granted a permanent injunction restraining M.B. Enterprises from manufacturing, selling, or dealing in any goods bearing the 'NUTELLA' trademark or any similar mark. Taking into account the large scale of the infringing activities, the court awarded damages of ₹30,00,000 and imposed additional costs of ₹2,00,000 on the defendant.

'NUTELLA' Declared a Well-Known Trademark

The court meticulously evaluated Ferrero's request to declare 'NUTELLA' a well-known trademark under Section 2(zg) of the Trade Marks Act. Considering the brand's long and continuous use since 1964, its extensive presence in India, significant promotional expenditure, and global recognition, the court concluded that the trademark had crossed the required threshold.

"This Court has no hesitation in declaring the trademarks ‘NUTELLA’/ [logo] of the plaintiffs as ‘well-known trademark’ respectively under Section 2(zg) of the Act."

This declaration provides 'NUTELLA' with broader protection against infringement and dilution, even for goods and services not related to its core business, cementing its status as a highly reputed brand in India.