Delhi High Court declares Nutella a ‘well-known trademark’

The Delhi High Court has declared ‘Nutella’ a well-known trademark under Indian trademark law, recognising its transborder reputation, iconic status and enduring consumer association. [Ferrero SPA v. MB Enterprises].The declaration came as part of a broader judgment in favour of Ferrero SpA in a suit against a Thane-based counterfeiter, where the Court also awarded ₹30 lakh in damages and issued a permanent injunction restraining further infringement.Justice Saurabh Banerjee held that Ferrero had successfully met the statutory test under Section 2(zg) of the Trade Marks Act, 1999 for well-known mark recognition, noting Nutella’s presence in the Indian market since 2009 and globally since 1964.“By virtue of its long-standing use, extensive marketing, and unique trade dress, ‘NUTELLA’ has become synonymous to a thick creamy hazelnut cocoa spread...The plaintiffs have been able to cross the threshold,” the Court said, adding that the mark had also been recognised by WIPO and the International Trademark Association..The ruling came in a trademark infringement suit filed by Ferrero SpA and its affiliates against MB Enterprises, which was allegedly manufacturing counterfeit hazelnut cocoa spreads using identical packaging and the 'Nutella' mark. The matter came to light after a raid by the Maharashtra Food and Drug Administration in October 2021, which led to the seizure of over 9.5 lakh counterfeit Nutella units and nearly 4 lakh packaging components including jars and labels.Despite service of summons, the defendant failed to appear before the Court or file a written statement. As a result, the suit proceeded ex parte and the Court allowed Ferrero’s application for summary judgment..The counterfeiting was uncovered during a 2021 raid by the Maharashtra Food and Drug Administration (FDA), which seized nearly 10 lakh units and packaging materials imitating Nutella jars. The plaintiffs argued that a judicial recognition of ‘Nutella’ as a well-known trademark was essential not only to vindicate their rights in this case, but also to ensure broader protection in future cases..Justice Banerjee stressed that the counterfeiting posed serious public health risks - particularly to children - and involved clear mala fide intent to deceive consumers by copying the Nutella brand name, packaging and visual elements.“If not stopped, the same can cause serious public harm…The aspect of due diligence and circumspection is necessary,” the Court said..Ferrero was represented by Advocates Pravin Anand, Vaishali R Mittal and Shivang Sharma from Anand & Anand. .[Read Judgment]