'Nutella' a well-known trademark 

Ferrero SPA & Ors v. M.B. Enterprises 

The Parties and Dispute: The plaintiffs, Ferrero SpA & Ors., part of the world-renowned Ferrero Group and proprietors of the trademark ‘NUTELLA’ (used for hazelnut cocoa spread since 1964), sought a permanent injunction and damages against the defendant, M.B. Enterprises. The defendant was found to be manufacturing, supplying, and selling counterfeit ‘NUTELLA’ products bearing trademarks, labels, and trade dress identical to those of the plaintiffs.

Key Findings and Judgment:

1. Defendant's Conduct: The defendant failed to appear or file a written statement despite being served, leading the court to proceed ex parte and deem the plaintiffs' averments admitted as true.

2. Infringement and Mala Fide Intent: The infringement was first discovered during an FDA raid in October 2021, where officials seized 9,53,400 units of counterfeit ‘NUTELLA’ and extensive packaging material. The Court determined the defendant was acting with mala fide intent to ride upon the plaintiffs’ established goodwill, committing clear infringement and passing off.

3. Public Health Concern: Because the product is an edible item, consumed widely, including by children, the Court emphasized a duty to apply a stringent test and exercise a greater degree of care and caution to prevent public harm from spurious products.

4. Relief Granted: The High Court allowed the suit and passed a summary judgment in favor of the plaintiffs.

 ◦ The defendant was permanently restrained from manufacturing, selling, or dealing in counterfeit products bearing the identical or similar ‘NUTELLA’ trademarks or trade dress.

 ◦ The plaintiffs were awarded Rs. 30,00,000/- towards damages and Rs. 2,00,000/- in costs and special costs.

5. Well-Known Trademark Status: The Court formally declared the plaintiffs’ trademarks ‘NUTELLA’ and its device marks as ‘well-known trademarks’ under Section 2(zg) of the Trade Marks Act, 1999. This declaration was based on its long-standing and continuous global use since 1946, registration dating back to 1975, extensive promotion (expenditure running into crores of rupees), and recognition by international bodies like the World Intellectual Property Organization (WIPO) and the International Trademark Association (INTA).