Case Name: Ferrero S.p.A. et al. v. M.B. Enterprises.
Case Number: CS (Community) 593 of 2021.
Judgment Date: July 28, 2025.
Judge/Bench: Justice Saurabh Banerjee
Introduction:
Nutella maker company called international ferrero group is the plaintiff in the present case. They instituted a company law suit claiming passing off and trademark infringement against the defendant, M.B. Enterprises. The defendant was putting out counterfeits of “Nutella” jars which also replicated Ferrero’s trade dress and trademarks. Although they were served with summonses the defendant did not show up to or contest the suit. Thus the plaintiffs asked for a permanent injunction and damages.
Issues for Determination:
Whether the issue of pass off and trademark infringement in this case?
Whether plaintiffs are awarded a permanent injunction and damages?
Does Nutella have a trademark which is well known in India?
Legal Provisions Involved:
Trade Marks Act, 1999
Section 29 Registered Trademark Violation.
Section 2 (zg) — which includes the definition of well known trademark.
Section 11.6 Determination of well known trademark.
Code of Civil Procedure, 1908
Order VIII Rule 10 For failure to file written statement.
Order Twelve Rule 6 Judgment on admissions.
Order XIII-A – Summary judgment
Appellant (Plaintiffs’) Arguments:
Plaintiffs Ferrero S.p.A. and Soremartec S.A. are the registered owners of the NUTELLA trademark in India. We see that which defendants’ product packaging is a very deliberate and bold replica of the Nutella jar, they have reproduced what we consider to be the key visual elements of our trademark the shape, color scheme, label layout, and font style. This is not only a case of trademark infringement but also pass off which is an attempt to mislead the consumers.
Also in this case the plaintiffs put forth in detail their sales reports, marketing spend, and global brand image which they used to present Nutella as a very recognizable mark under Indian trademark laws. Also reported is that the defendants’ fake product presented a great health risk which in particular affected kids’ health due to the issue of product’s origin and may also have had unsafe ingredients. Also brought out was that the defendants did not show up in the court which left the plaintiffs to present their case in full and which in effect they did.
Respondent (Defendant)’s Arguments:
No action from the defendant was reported at any point in the proceedings. Due to the defendant’s non response which was after he had been properly served with the summons, the Court applied to Order VIII Rule 10 of the Civil Procedure Code which in turn treated the plaintiff’s claims as admitted.
Court’s Analysis:
The Court determined that the defendant’s reproduction of Nutella jar designs was intentional, in bad faith, and for the purpose of confusing consumers which in turn gave the plaintiffs’ brand and good will an unfair benefit. The Court looked at a number of past cases related to the protection of famous marks which included:.
Cadila Health Care Ltd. vs Cadila Pharmaceuticals Ltd. (2001).
Domino’s Intellectual Property Owner LLC v. Domnick Pizza (2023).
In the case of whether Nutella is to be recognized as a well known mark in India the Court looked at what Section 11(6) of the Trade Marks Act of 1999 requires. It was reported that Nutella has had global use since 1946 and in India since 1975, has large sales and advertising market presence and in the past has been recognized by international organizations like WIPO and INTA. Also of note the Court brought up issues of public health which put forth the issue of the defendant’s health hazardous fake food products which were passed off via false labeling.
Judgment:
The Delhi high court gave out a permanent injunction which bars the defendant from using the NUTELLA trademark or any which is very similar in label, shape, packaging or get-up. Also it was ordered that the plaintiffs be given out Rs 30 lakhs as damage and also an extra Rs 2 lakhs for special costs which is to be put into the Delhi High Court Bar Association Welfare Fund.
In particular the Court had reported that Nutella had achieved “well known trademark” status in India which in turn has strengthened its protection under the aegis of Indian intellectual property law as per Section 2(zg) of the Trade Marks Act of 1999.
Conclusion:
The high court of Delhi has once again brought to fore the issue of trademark protection which is very much so for global brands which have a strong presence in India. In a case regarding Nutella the Court recognized it as a famous trademark which in turn has made way for better legal protection against lookalikes. Also this judgment puts forth a strong stand against the issue of counterfeiting which is very present in the food industry due to health and safety issues.
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WRITTEN BY AYUSHI TRIVEDI
