Delhi High Court: In the present case, the plaintiffs sought a decree of permanent injunction for infringement of its trade mark, passing off, delivery up and damages against the defendant in respect of its trade mark ‘NUTELLA’ and 
, and even sought their mark ‘NUTELLA’ to be declared as a well-known trade mark under Section 2(zg) of the Trade Marks Act, 1999 (‘the 1999 Act’). A Single Judge Bench of Saurabh Banerjee, J., declared ‘NUTELLA’/
as a ‘well-known trade mark’ and granted permanent injunction to the plaintiffs, thereby restraining the defendant and all persons acting on its behalf from manufacturing, packaging, supplying, distributing, selling, advertising, or dealing in any counterfeit ‘NUTELLA’ products. Further, the Court stated that the plaintiff was entitled to Rs 30,00,000 towards damages of the present proceedings and directed the defendant to pay Rs 2,00,000 as costs to Delhi High Court Bar Association Lawyers Social Security and Welfare Fund.
Background:
The plaintiffs were part of the globally recognized Ferrero Group, established in 1946, and were one of the leading chocolate producers and confectionery companies in the world. The plaintiffs products were sold under its popular brands/trade marks, namely, FERRERO ROCHER, NUTELLA, TIC TAC, KINDER, KINDER JOY, KINDER BUENO, KINDER SCHOKO-BONS, CONFETTERIA RAFFAELLO, FERRERO RONDNOIR, and a host of other brands/trade marks.
The plaintiffs coined and adopted the mark ‘NUTELLA’ in 1964 for their hazelnut cocoa spread and have since then used a distinctive packaging design for its ‘NUTELLA’ jar 
, including a white plastic cap, black-and-red color-coded word mark 
, and 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. The plaintiffs’ were granted registration for the trade mark ‘NUTELLA’ and its variations under Classes 3, 5, 7, 8 to 12, 14 to 16, 18, 20, 21, 24, 25 to 28, 30, 31, 34, 38, 39 and 43, and its earliest registration for ’NUTELLA’ dated back to 1975.
The plaintiffs received a letter from the Food Safety Officer under the Food and Drug Administration (‘FDA’) to appear before him as the FDA Department, during a raid, found the defendant to be manufacturing hazelnut cocoa spread under the brand ‘NUTELLA FERRERO’ under unhygienic conditions. Thus, the plaintiffs discovered that the defendant was manufacturing and distributing counterfeit ‘NUTELLA’ products under unhygienic conditions in Maharashtra.
The plaintiffs submitted that they were the prior adopters and registered proprietors of the ‘NUTELLA’ trade mark and were thus entitled to exclusive use of the same. They asserted that the defendant’s use of identical trade mark, packaging, and trade dress was aimed at deceiving consumers into purchasing counterfeit goods under the false belief that they were genuine. The plaintiffs contended that ‘NUTELLA’ being an edible item, the defendant’s actions, posed a major health risk to the consumers.
Case Analysis and Decision
The Court observed that it was so shocking that the defendant was using identical name, packaging, labels, trade dress without any authorization of the plaintiffs. This clearly showed its mala fide intent as it was guilty of using the registered trade marks of the plaintiff and clandestinely carrying on manufacturing/offering/selling/marketing the impugned products with an intent to reflect that it was the plaintiffs and/or connected with them in some manner as also to ride upon the well-established goodwill and reputation of the plaintiffs. The Court held that the plaintiff’s being registered proprietors of the trade marks ‘NUTELLA/
’ and its variants, were well and truly entitled for the reliefs under Section 28 of the 1999 Act.
The Court emphasized that since the plaintiffs’ products were edible consumer goods, the defendant’s actions posed serious public health risks and potential harm to the plaintiffs’ goodwill and reputation. The Court further observed that the defendant’s continued absence from proceedings further raised suspicion over its conduct. The Court stated that permitting the defendant’s operations would cause confusion, deception, and damage to both consumers and the plaintiffs.
Therefore, the Court granted a permanent injunction, restraining the defendant and all persons acting on its behalf from manufacturing, packaging, supplying, distributing, selling, offering for sale, advertising, or dealing in any counterfeit ‘NUTELLA’ products, or any product not emanating from the plaintiffs or their authorieed distributors and bearing the trade mark ‘NUTELLA’, 
, 
, 
, or any other mark, trade dress identical or similar to the plaintiffs ‘NUTELLA’ trade marks thereby amounting to infringement of the plaintiffs’ trade marks and passing off.
The Court stated that the plaintiff was entitled to Rs 30,00,000 towards damages of the present proceedings and directed the defendant to pay Rs 2,00,000 as costs to Delhi High Court Bar Association Lawyers Social Security and Welfare Fund within six weeks from the date of the present order.
As regards the plaintiff’s prayer for declaration of their trade mark ‘NUTELLA’ as a ‘well-known trade mark’, the Court referred to Section 11(6) of the 1999 Act, and considered the extent of public recognition, duration, extent and geographical use of the mark. The Court noted that the plaintiffs had been using the ‘NUTELLA’ mark continuously since 1946, with registrations dating back to 1975; hey were globally established, and their mark was widely recognised, not limited to India. Further, the Court noted that the mark ‘NUTELLA’ was already declared as a well-known trade mark by the World Intellectual Property Organization and the International Trade ark Association, and thus, declared ‘NUTELLA’/
as a ‘well-known trade mark’ under Section 2(zg) of the 1999 Act.
[Ferrero Spa v. M.B. Enterprises, 2025 SCC OnLine Del 5105, decided on 28-7-2025]
Advocates who appeared in this case :
For the Plaintiffs: Pravin Anand, Vaishali R Mittal and Shivang Sharma, Advocates.
