Delhi High Court Spreads A Thick Layer Of Protection: Nutella Declared A Well-known Trade Mark And Counterfeit Operation Shut Down

This article highlights Nutella's strong brand recognition and describes a recent Delhi High Court case where Ferrero Spa & Ors ("Ferrero"), successfully stopped a large-scale counterfeiting operation by an entity named M.B. Enterprises ("MB"). The Court, acting on evidence from an FDA raid, granted Ferrero broad relief and officially recognised Nutella as a "well-known" trademark in India. The judgment emphasises the importance of protecting consumer trust and public health, especially regarding counterfeit food products, and signals robust enforcement of trade mark rights in India.

Chocolate spread

*Image credit

For many, the term "chocolate spread" immediately brings to mind one name - Nutella. Recently, a significant court case in India centered around Nutella, making it a noteworthy discussion point.

The parties

The Italian company, Ferrero owns the trade mark NUTELLA, which is used to identify a hazelnut cocoa spread. When Ferrero became aware that an Indian company, MB was infringing the NUTELLA trade mark, it approached the Delhi High Court for relief. Ferrero sought a permanent injunction that would stop MB from infringing and /or passing off the trade mark NUTELLA. Ferrero also wanted delivery-up and damages.

More on the dispute

Here are some interesting aspects of the case:

• This was serious counterfeiting: MB had been involved in the manufacture, supply, distribution and sale of large quantities of counterfeit NUTELLA chocolate spread – the copycat product features 'identical trade marks, labels and trade dress' .
• Uncovered by a raid: The counterfeiting activity came to light as a result of a raid conducted by the Indian Food and Drug Administration ("FDA"). Well done FDA!
• A lot of chocolate spread: Serious quantities of counterfeit goods were seized in the raid – 9,53,4000 units of counterfeit NUTELLA to be exact. Which does make you wonder. Who gets to dispose of this stuff? And are there people out there who would relish the task?
• As well as considerable packaging material: As in some 4000 000 unit apparently!

The Delhi High Court's take

The Indian court had rather a lot to say, including:

• Blatant copying: MB was offering its (counterfeit) goods using an 'identical name, identical packaging, identical labels and identical trade dress'. Nothing remotely subtle!
• Bad faith: MB did not have the consent of the trade mark owner (Ferrero), which meant that it was acting mala fide (in bad faith).
• Clear infringement of rights: There was trade mark infringement as well as passing off.
• Public harm: The products involved in this case are consumed by people from all sections of society, and this of course includes children. The court made the point that the (counterfeit) products sold by MB under the trade mark NUTELLA can be bought 'in the open market, without any checks and balances.... (this) can be harmful for human consumption... (it) can cause serious public harm... (including) dilution of the long-standing reputation and goodwill' of Ferrero.
• Well-known mark: The Delhi High Court 'has officially declared Nutella as a well-known mark under Indian trademark law, citing its global reputation, iconic status, and deep-rooted consumer association.'
• Ex parte: Although 'the defendant failed to appear or contest the matter despite being served, the Court proceeded ex parte and granted summary judgment in favour of Ferrero.'
• Going forward: The point has been made that the Delhi High Court's decision is expected to bolster trademark enforcement in India. Moreover, the judgment will reaffirm judicial commitment to protecting internationally reputed brands from counterfeiting and consumer deception.
• Recognition: The court highlighted Nutella's'presence in India since 2009 and globally since 1964'. It also noted that Nutella has 'received recognition from international bodies like WIPO and the International Trademark Association'.
• Bad faith: The court spoke of 'serious public harm', stressing that the'mala fide actions of MB Enterprises not only infringed on Ferrero's intellectual property rights, but also posed a serious health risk, especially to children, by distributing counterfeit food products'.

So, an emphatic win for the good guys!

The case underscores the importance of strong legal protections for well-known brands like Nutella, especially in safeguarding public health and consumer trust. The Delhi High Court's decisive ruling not only affirms Ferrero's rights but also sets a powerful precedent for combating counterfeiting in India. It sends a clear message that the judiciary is committed to protecting genuine brands and ensuring consumer safety, reinforcing India's stance against intellectual property infringement and counterfeit products.

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