Back
2013 Supreme(Del) 2542
IN THE HIGH COURT OF DELHI
S. Muralidhar, J.
FERRERO SPA AND ANOTHER — Appellants
Vs.
MAHENDRA DUGAR AND ANOTHER — Respondents
C.S. (OS) No. 233 of 2012
Decided On : 24-07-2013
Advocate Appeared:
For the Appellants : Vaishali Mittal, Nupur Kumar.
The judgment establishes the principle that infringement of registered trademarks and trade dress can lead to decrees for damages and delivery up of infringing materials.
Headnote:
Trademark Infringement - FERRERO ROCHER - Trade Marks Act, 1999 - Section 134(2), Section 20 of the CPC
Fact of the Case:
Plaintiffs filed a suit against the Defendants seeking injunction for trademark infringement and passing off of FERRERO ROCHER chocolates. Defendants were accused of producing look-alikes of FERRERO ROCHER and selling them under the name 'ROYS'.
Finding of the Court:
The Court found that Defendant No. 2 was infringing the registered trademarks and trade dress of the Plaintiff. The Court decreed the suit against Defendant No. 2, awarding damages and ordering delivery up of the infringing materials.
Issues: Trademark infringement, passing off, damages, delivery up, rendition of accounts
Ratio Decidendi: The Court held that the Defendants' products were causing incalculable harm to the goodwill and reputation of the Plaintiff's product, and thus decreed the suit in favor of the Plaintiff.
Final Decision: The suit was decreed against Defendant No. 2, awarding damages and ordering delivery up of the infringing materials.
ORDER :
1. Ferrero SPA and Ferrero India Pvt. Ltd. ['FIPL'], Plaintiffs 1 and 2 respectively, have filed this suit against Mr. Mahendra Dugar and Maxsweet Foodstuffs Co. Ltd., China, Defendant Nos. 1 and 2 respectively, seeking a permanent injunction restraining the Defendants from infringing the Plaintiffs' registered trademarks, including trade dress, FERRERO ROCHER and from passing off the Defendants' goods as the Plaintiffs' FERRERO ROCHER chocolate specialties. An incidental prayer for damages has also been sought. Plaintiff No. 1 was founded by founded by Pietro Ferrero in 1946. He is stated to have concocted innovative products in his small pastry shop which grew to become a factory and later a worldwide success story. Plaintiff No. 1 is stated to be one of the four biggest confectionery producers worldwide, employing around 22,000 people. It is stated that the word 'FERRERO' is a foreign surname and has no meaning in India except as a trademark for high quality, delicious chocolates and confectionery of Plaintiff No. 1. Plaintiff No. 2 is the Indian subsidiary of Plaintiff No. 1, having its registered office at Primrose Road, Gurapa Avenue, Bangalore and the branch office at Delhi. Plaintiffs 1 and 2 are collectively referred to hereafter as the Plaintiff.
2. It is stated that among the trademarks in the Plaintiff's portfolio are FERREROR ROCHER, NUTELLA, TIC TAC and a host of others. The Plaintiff company is also known worldwide for its KINDER umbrella mark and several marks belonging to KINDER family such as KINDER SURPRISE, KINDER BUENO, KINDER JOY, KINDER COUNTRY etc..
3. It is stated that the Plaintiff's chocolates are the most sold praline worldwide. The annual sales turnover of FERRERO ROCHER is stated to be one billion US Dollars. It is stated that the consumers and the trade alike identify and recognize the products of the Plaintiff owing to the distinct and packaging style of FERRERO ROCHER chocolates which have the following distinct elements:
(a) the rounded crushed gold wrappers always bear an oval shaped white sticker
(b) crushed gold coloured wrappers that hold nutty chocolate balls.
(c) each resting in a fluted brown colored cupcake shaped holder.
(d) These uniquely packaged individual chocolates are further packed in transparent boxes, bearing an oval label on the lid.
(e) A distinctive diamond pattern on the cover in one of the packaging variants FERRERO ROCHER chocolates which has been used since 2003 and is registered as a trademark under the Madrid protocol.
(f) The contents of the box in their egg holder-style container can be clearly seen by the purchasers in packaged form without opening it.
4. It is stated that the aforesaid features have been used for several decades and have become a characteristic part of FERRERO ROCHER packaging. It is stated that the trade dress of FERRERO ROCHER thus has substantial trademark significance of its own and is unfailingly recognised and identified by the consumers as being a product of a singular origin. The Plaintiff states that they hold the following three registrations in India for the trademarks.
5. The Plaintiff states that it has spent millions of dollars worldwide, including in India on the promotion and publicity of its chocolate under the trade dress as described above, which brings out sharply distinct features of FERRERO ROCHER. It is stated that the crushed gold and fluted brown wrappers of FERRERO ROCHER chocolates along with the oval ribbon like device are as familiar and identifiable to consumers worldwide.
6. It is stated that Plaintiff No. 2 has been importing, marketing and promoting a range of the Plaintiff's products including FERRERO ROCHER chocolates for domestic consumption. The annual sales of the Plaintiff's products in India is stated to be around Rs. 110.82 crores. Para 9 of the plaint sets out the sales figures for the past three years. In 2010-11, the sales turnover was Rs. 22,069 lakhs.
7. The Plaintiff states that they shortly before the su
