Nutella gets ‘well-known trademark’ status in India: Delhi High Court rules in Ferrero’s favour

The Delhi High Court has declared Italy’s leading chocolate producers and confectioner Ferrero International SpA’s ‘Nutella’ a well-known trademark under Indian Trade Marks Act, 1999, considering its goodwill and reputation across the globe, including India.

The court said that Ferrero International SpA , part of the world-renowned Ferrero Group, and its counterparts have been continuously and uninterruptedly using Nutella since 1946 and have valid and subsisting registration thereof from 1975.

Justice Saurabh Banerjee in an exparte order said that Ferrero’s Nutella trademark has completed 50 years of its presence in the Indian market in 2014. “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 has also been recognised by WIPO and the International Trademark Association.

The Italian company has successfully met the statutory test under the 1999 Trade Marks Act for well-known mark recognition, noting Nutella’s presence globally since 1964.

The judge noted that the Italian company has spent Rs three crore, Rs seven crore and Rs 16 crores from FY 2020-21, 2021-22 and 2022-23, respectively, on promotions. Besides,it has gross sales figures of Rs 233 crore, Rs 145 crore and Rs 106 crore for the financial years 2020-21, 2021-22 and 2022-23 respectively. “This leaves no shadow of doubt that plaintiffs are well established in the markets all across the globe and are not mere fly-by-night operators. Their registered trademarks Nutella and its variants are recognised all across the globe, including but not limited to India,” said Justice Banerjee said.

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The direction came on a trademark infringement suit filed by Ferrero SpA and its affiliates against Thane-based MB Enterprises which engaged in manufacturing, supplying, distributing and selling large quantities of counterfeit Nutella products bearing identical trademarks, labels, and trade dress to Ferrero.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 court noted that counterfeiting posed serious public health risks – particularly to children – and involved clear mala fide intent to deceive consumers. “If not stopped, the same can cause serious public harm…The aspect of due diligence and circumspection is necessary,” the order stated, while permanently restraining M.B. Enterprises, its partners, proprietors from manufacturing, packaging, supplying, distributing, selling and dealing in any manner whatsoever with counterfeit Nutella products or any product similar to the petitioner’s trademark.

“… if the defendant is allowed to continue under such circumstances, it is likely to result in causing utter confusion, lead to deception and cause damage amongst the members of the public at large as also to the long well-established goodwill and reputation of the plaintiffs as well,” the order stated, asking M.B. Enterprises to pay Rs 30 lakh as damages to Ferrero and costs and special costs of Rs two lakh to Delhi High Court Bar Association Lawyers Social Security and Welfare Fund.

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