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2026 Supreme(Online)(Del) 96
IN THE HIGH COURT OF DELHI AT NEW DELHI
C. Hari Shankar, Om Prakash Shukla, JJ
Abhimanyu Prakash – Appellant
Versus
Ferrero S.P.A – Respondent
RFA(OS)(COMM) 1/2026 | CM APPL. 331/2026
For the Appellants/Petitioners: Samrat Nigam, Akshay Srivastava, Krati Tiwari, Arpita Khanna
For the Respondents: Pravin Anand, Vaishali R. Mittal, Shivang Sharma
The registered proprietor of a trademark has a statutory right to seek delivery-up of infringing goods for the purpose of destruction upon a finding of infringement. Such ordered items must be destroyed to preserve the integrity of the registered mark and cannot be repurposed for commercial gain.
Headnote:(A) Trade Marks Act, 1999 - Sections 28(1) and 135(1) - Code of Civil Procedure, 1908 - Order XIII-A - Summary decree for permanent injunction and forfeiture of infringing goods - Appeal against trial court order directing handover of seized infringing jars to the trademark proprietor - Appellate court held that upon a formal finding of trademark infringement, the registered proprietor is statutorily entitled to seek delivery up of infringing material for the specific purpose of erasure or destruction - The court confirmed that such relief is a crucial safeguard for intellectual property rights and acts as a deterrent; however, it clarified that repurposed commercial use of seized infringing materials is not permitted under the law. (Paras 6, 17, 20, 22)
(B) Remedies - In cases where infringement is established, the mandate for delivery-up of infringing stock is to ensure the cessation of the infringing activity, and such items must be destroyed under court supervision to prevent further dissemination or commercial usage. (Paras 22, 24)
Facts of the case:
The plaintiffs, as registered owners of a specific trademarked jar design, sought permanent injunctions against the defendants for manufacturing and selling copies. A trial court summarily decreed the suit, ordering the seizure and delivery of the infringing inventory to the plaintiffs for destruction or alternative social initiative use. The defendants appealed, arguing that the jars could be used for legitimate purposes and contested the mandatory destruction, asserting the jars were not infringing.
Findings of Court:
The court upheld the finding that the defendants were knowing infringers and that the goods in question violated the registered trademark rights. The court affirmed that the statutory obligation to deliver up infringing goods ensures that the proprietor's rights are protected, while clarifying that such goods cannot be repurposed for commercial gain.
Issues: The primary issues were whether the trial court's order for the release of seized infringing inventory to the proprietor was legally sound and whether such goods should be destroyed or could be repurposed commercially.
Ratio Decidendi: Upon finding trademark infringement, the statutory framework grants the registered proprietor the right to claim the delivery up of offending goods. To maintain the integrity of intellectual property protection, such goods must be destroyed rather than diverted toward commercial channels, irrespective of their utility for other purposes.
Result: Appeal allowed in part; the trial court's order was modified to ensure that all seized infringing inventory is destroyed under supervision and prohibited from being put to any commercial use.
| Table of Content |
|---|
| 1. dispute concerning trademark infringement and summary disposal of suits regarding infringing inventory. (Para 1 , 2 , 3 , 4 , 5 , 6) |
| 2. analysis of evidentiary findings regarding infringer's intent and appeal procedural history. (Para 7 , 8 , 9 , 10 , 11 , 12) |
| 3. assessment of prior judicial findings and the finality of infringement determinations in appeal. (Para 13 , 14 , 15 , 16) |
| 4. statutory duty under trade marks act for destruction of goods infringing registered trademark rights. (Para 17 , 18 , 19 , 20 , 21 , 22 , 23) |
| 5. court order directing destruction of infringing materials while precluding secondary commercial use. (Para 24 , 25 , 26) |
JUDGMENT(ORAL)
06.01.2026
C.HARI SHANKAR, J.
1. This appeal assails judgment dated 19 November 2025 and order dated 8 December 2025 passed by a learned Single Judge of this Court in CS (Comm) 65/2023, to a limited extent.
2. We have heard Mr. Samrat Nigam, learned Senior Counsel for the appellants and Mr. Pravin Anand, learned Counsel for the respondents, at some length.
3. The proceedings emanate from a suit instituted by the respondents against the appellants seeking a decree of a permanent injunction, restraining the appellants from infringing the respondents’ registered trademarks.
4. Paras 2 and 3 of the impugned judgment dated 19 November 2025 set out the dispute in conspectus:
“2. Plaintiffs have filed the present suit seeking a decree of permanent injunction restraining the Defendants from, inter alia, infringing the Plaintiffs' registered trademarks, including ‘ [‘NUTELLA glass jars’] ‘NUTELLA/’ and distinctive labels associated with the mark ‘NUTELLA’, passing off counterfeit goods under the identical mark along with other ancillary reliefs and for damages and costs.
3. The facts which have come on record reveal that Defendant Nos. 1 to 3 are manufacturers and sellers of empty NUTELLA glass jars which is a near identical copy of the original Nutella jar. Defendant Nos. 1 to 3 state that the impugned NUTELLA glass jars manufactured by them is referred to as Nutella jar in their industry and the said Defendants were offering these glass jars on their website as NUTELLA glass jars. Defendant No. 4 admits offering the impugned NUTELLA glass jars for sale on its own website and third-party e-commerce websites as NUTELLA glass jars.”
5. We need not enter into the niceties of the dispute, as the learned Single Judge ultimately deemed it appropriate to summarily decree the suit in terms of Order XIII-A of the Code of Civil Procedure,1908. While doing so, the learned Single Judge has noted, in paras 15 to 18 of the order dated 19 November 2025, as under:
“15. The Plaintiffs are the registered proprietors of NUTELLA trademarks including NUTELLA jar across various territories around the world and have obtained registration under various Classes. The products of the Plaintiffs under the distinctive and proprietary NUTELLA, trademarks and brand NUTELLA are made available for sale throughout India in different sizes, i.e. 180 ml, 350 ml and 750 ml.
16. Defendant Nos. 1, 2 and 3 are manufacturers and sellers of empty glass jars in 180 ml, 350 ml and 650 ml sizes which are deceptively similar to the Plaintiffs’ Nutella jar . The Defendants were manufacturing the said impugned NUTELLA glass jar without any authorisation from the Plaintiffs, and offering the product for sale through their respective websites and online platforms.
17. In these facts, when the Plaintiffs filed the present suit, vide order dated 06.02.2023, as also modified on 08.02.2023, Coordinate Bench of this Court granted an ex-parte ad-interim injunction restraining the Defendants from dealing with the impugned 'NUTELLA glass jars'. Vide order dated 06.02.2023, the Court also appointed three Local Commissioners to inventorize and seize infringing material found at the premises of Defendant Nos. 1 to 3.”
18. The said injunction order dated 06.02.2023 was not contested and in fact Defendants consented to its
