[NUTELLA/KINDER v. KINDTELLA] Delhi HC restrains Kamco Chew Foods from using marks ‘COKOTELLA’, ‘KINDTELLA’ and ‘MYTELLA’

Delhi High Court: A Single Judge Bench of C. Hari Shankar, J.* noted that the manner of representation of the label with the defendants’ impugned product, where the unique manner of representation with first letter in black and the rest of the letters in the word in red colour was identical to the plaintiff’s product and thus, opined that a prima facie case of infringement and passing off was made out and therefore, till the next date of hearing, the Court restrained the defendants from manufacturing, marketing, making available for sale, selling, and dealing in any manner whatsoever in the impugned products i.e., impugned products, ‘COKOTELLA’, ‘KINDTELLA’ and ‘MYTELLA’ or any other deceptively similar mark or product not emanating from the plaintiffs’ or their authorized distributors and having identical or deceptively similar features of the plaintiffs’ trade marks NUTELLA and KINDER.

Background

The plaintiff, a company registered under the laws of Italy, submitted that, in 1964, the plaintiff coined the trade mark ‘NUTELLA’, which it had been using continuously and extensively since then. The plaintiff also submitted that the ‘NUTELLA’ product used a unique and distinctive packaging with a distinctive design, which acted as a source identifier for the plaintiff. The unique colour combination and logo of the plaintiff’s design as well as the jar in which the plaintiff sols its product was created in 1964. It was further submitted by the plaintiff that the trade mark ‘KINDER’ was adopted by it in 1968 and had registrations in the marks ‘KINDER’ and ‘JOY’. The mark ‘KINDER SURPRISE’ was adopted by the plaintiff in 1974 as an extension to the umbrella mark ‘KINDER’ and, in 2001, the plaintiff adopted the trade mark ‘KINDER JOY’, to sell distinctive egg-shaped children’s confectionary, with the item accompanied by a toy.

The defendants were engaged in the manufacture and sale of confectionary products, inter alia, for children. In May 2023, the plaintiff came across a YouTube video, uploaded by a third party, advertising the defendants’ product, ‘COKOTELLA’, using a label and colour combination which was deceptively similar to the label and colour combination used by the plaintiff for its device mark ‘NUTELLA’. Thus, the plaintiff had instituted the present suit against the defendants, seeking a decree of permanent injunction restraining the defendants as well as all others acting on their behalf from using and selling its products ‘COKOTELLA’, ‘KINDELLA’ and ‘MYTELLA’ in the impugned packaging’s and from using the impugned trade mark or any other trade mark which was deceptively similar to the ‘NUTELLA’ and ‘KINDER’ trade mark of the plaintiff.

Submissions on behalf of the Plaintiff

It was submitted that the defendant had merely created a combination of ‘KIND’ being the first part of the word ‘KINDER ‘, and ‘ELLA’ being the latter half of the word ‘NUTELLA’ to create the mark ‘KINDELLA ‘, to be used in a manner deceptively similar to the manner in which the plaintiff used the mark. Further, it was submitted that the use of the concluding syllable ‘ELLA’ rendered the impugned marks phonetically as well as otherwise deceptively similar to the mark of the plaintiff.

It was further submitted that earlier plaintiff had instituted a suit against the defendant, in which the plaintiff had sued the defendant for selling its product ‘MOTU PATLU’ in egg-shaped packages similar to those in which the plaintiff was selling the products using its ‘KINDER’ trade mark and the said suit was decreed in favour of the plaintiff in 2019 and the Court had also declared the mark ‘KINDER’ as a well-known trade mark within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999.

Similarities between the plaintiff and the defendants’ labels:

Manner of use by the Plaintiff

Manner of use by the Defendants

Analysis, Law, and Decision

The Court noted that there were following similarities between the plaintiff’s and the defendants’ products:

The plaintiffs’ product name and trade mark was ‘NUTELLA ‘, whereas the defendants’ impugned product was being sold under the mark ‘KINDELLA’ and was made up of the plaintiffs’ well-known trade mark ‘KINDER’ + ‘NUTELLA ‘. Moreover, the manner of representation of the , label with the defendants’ impugned product, where the unique manner of representation with first letter in black and the rest of the letters in the word in red colour was identical. The manner of representation of the term was also identical. The term had been replaced with the term which was written in an identical colour and a nearly identical font.
The manner of representation of the label with the defendants’ impugned product, where the unique manner of representation with first letter in black and the rest of the letters in the word in red colour was identical.
A jar of milk kept on the side, along with two hazelnuts and a unique yellow flower(s) and leaves, was nearly identical.

The Court opined that a prima facie case of infringement and passing off was made out and therefore, till the next date of hearing, the Court restrained the defendants as well as all others acting on their behalf from manufacturing, marketing, making available for sale, selling, and dealing in any manner whatsoever in the impugned products i.e., impugned products, ‘COKOTELLA’, , ‘KINDELLA’,,, and ‘MYTELLA’,, or any other deceptively similar mark or product not emanating from the plaintiffs’ or their authorized distributors and having identical or deceptively similar features of the plaintiffs’ trade marks NUTELLA,,, KINDER, etc.