Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2025 Supreme(Del) 701

IN THE HIGH COURT OF DELHI AT NEW DELHI
SAURABH BANERJEE, J.

Ferrero Spa & Ors. – Plaintiffs
Versus
M.B. Enterprises – Defendant
CS(COMM) 593 of 2021 & I.A. 36529 of 2024
Decided On : 28-07-2025

Advocates Appeared:
For the Plaintiffs : Mr. Pravin Anand, Ms. Vaishali R Mittal and Mr. Shivang Sharma, Advs.

Trademark holders have the right to seek permanent injunction and damages against counterfeiting and passing off, especially when public health is at risk and the trademark is declared as well-known.

Headnote:(A) Trade Marks Act, 1999 - Section 2(zg) and Section 11(6) - Trademark infringement and passing off - Plaintiffs, being the registered proprietors of the trademark ‘NUTELLA’, seek injunction and damages for the defendant's manufacture of counterfeit products - Defendant proceeded ex parte for failing to respond - Plaintiffs have established long-standing use and recognition of ‘NUTELLA’ as a well-known trademark - Court grants summary judgment in favor of plaintiffs, granting permanent injunction and damages. (Paras 30, 31, 36, 38)

(B) Trademark Protection - The court highlighted the necessity of protecting edible consumables under trademark law due to potential health risks and consumer deception. (Paras 25, 26, 27)

Facts of the case:
Plaintiffs, part of a globally recognized group, filed a suit for infringement related to their trademark ‘NUTELLA’ due to counterfeiting by the defendant, who did not appear and defaulted on the case. Plaintiffs have been active in the market for decades, with their trademark registered since 1975.

Findings of Court:
The court found the defendant guilty of trademark infringement and passing off, confirming the plaintiffs' claims of counterfeit goods, thereby supporting the plaintiffs' entitlement to damages and injunctive relief.

Issues: Whether the plaintiffs' trademarks qualify as well-known under the Trade Marks Act and the appropriate remedies for infringement and passing off by the defendant.

Ratio Decidendi: The court ruled that the evidence presented proved the plaintiffs’ longstanding reputation, thereby acknowledging their trademark as well-known, and mandated protection against the defendant's deceptive practices that infringe on consumer rights and public health.

Result: Suit decreed in favor of plaintiffs, granting relief sought.

Table of Content
1. plaintiffs seek injunction for trademark infringement. (Para 2 , 3 , 4)
2. background and registration of nutella trademark. (Para 5 , 6 , 8 , 9 , 10)
3. arguments on counterfeit actions and reputation. (Para 11 , 12 , 13 , 14 , 15 , 16 , 18 , 19 , 20)
4. court analysis on evidence and liability. (Para 21 , 22 , 27 , 28 , 29)
5. orders for injunction and damages. (Para 32 , 33 , 34)
6. final judgment and decree. (Para 38 , 39)

JUDGMENT :

SAURABH BANERJEE, J.

Preface:

1. The plaintiffs, vide the present lis seek passing of a decree of permanent injunction for infringement of its trademark, passing off, delivery up and damages against the defendant in respect of its trademark ‘NUTELLA’ and

2. On 24.11.2021, this Court, after issuing summons of the suit to the defendant, granted an ex parte ad interim injunction in I.A. 15235/2021, an application under Order XXXIX rules 1 & 2 of the Civil Procedure Code, 1908 (CPC), in favour of the plaintiffs and against the defendant.

3. Despite service, since the defendant neither entered appearance nor filed its written statement, the right of the defendant to file written statement was closed and the defendant was also proceeded ex parte vide order dated 20.11.2023. Further vide the same order dated 20.11.2023, the interim order dated 24.11.2021 was also made absolute pending disposal of the present suit.

4. Under these circumstances, the plaintiffs have filed I.A. 36529/2024 under Order VIII rule 10 of CPC for passing a summary judgment against the defendant.

Brief facts:

5. The plaintiffs are part of the world-renowned Ferrero Group, established in the year 1946 and currently one of the leading chocolate producers and confectionery companies in the world. The plaintiffs’ products are sold across the globe in over 170 countries, either directly or through authorized distributors, under its popular brands/ trademarks namely FERRERO ROCHER, NUTELLA, TIC TAC, KINDER, KINDER JOY, KINDER BUENO, KINDER SCHOKO-BONS, CONFETTERIA RAFFAELLO, FERRERO RONDNOIR, and a host of other brands/trademarks.

6. The plaintiffs first coined and adopted the mark ‘NUTELLA’ in the year 1964 and began using it for their novel hazelnut cocoa spread, popularly known for being a delectable and distinct sweetened hazelnut cocoa spread enriched in a thick creamy layer. In fact, the products under the trademark ‘NUTELLA’ of the plaintiffs are present in over 50 countries, across 5 continents and the plaintiffs run 31 production plants employing around 34,000 people.

7. The plaintiffs’ came up with its iconic ‘NUTELLA’ jar

consisting of a unique colour combination and logo in the year 1964. The plaintiffs’ hazelnut cocoa spread is, inter alia, sold in unique wide necked glass jars with a plastic white cap wherein, each jar has a label with the unique black and red colour coded word mark

along with an illustration of a slice of bread with the hazelnut cocoa spread, a knife dipped in hazelnut cocoa spread, a jar of milk, two hazelnuts, the unique yellow flowers and leaves.

8. While the plaintiffs’ NUTELLA products have been made available in the Indian market by the plaintiff no.3 since at least 2009, it was available in India through myriad channels from much earlier. In fact, the plaintiffs’ ‘NUTELLA’ completed 50 years of presence in the market in the year 2014.

9. For carrying on with its business activities, the plaintiffs have, upon application, been granted registration for the trademark ‘NUTELLA’ and its variations under Class(es) 3, 5, 7, 8 to 12, 14 to 16, 18, 20, 21, 24, 25 to 28, 30, 31, 34, 38, 39 and 43, the earliest registration dating back to the year 1975.

10. The defendant is trading as M/s. M.B. Enterprises and is inter alia engaged in the business of manufacturing, supplying, distributing and selling large quantities of counterfeit ‘NUTELLA’, i.e. hazelnut cocoa spread bearing an identical trademarks, labels, and trade dress to the plaintiffs.

Case of the plaintiffs:

11. Learned counsel for the plaintif