Delhi High Court declares Nutella a well-known trademark, awards Rs 30 lakh in damages in a major counterfeit case involving fake hazelnut spreads sold under the Nutella brand name.
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NEW DELHI: In a landmark decision, the Delhi High Court has officially declared ‘Nutella’ a well-known trademark under Indian trademark law. The declaration was issued in a trademark infringement suit filed by Italian confectionery giant Ferrero SpA against a Maharashtra-based counterfeit manufacturer, MB Enterprises, which was found producing and selling fake Nutella products.
Background
Ferrero, the world-renowned maker of popular brands like Ferrero Rocher, Kinder, and Tic Tac, adopted the mark ‘Nutella’ in 1964 for its signature hazelnut cocoa spread. Since then, Nutella has become a globally recognized household name, entering Indian markets by 2009 and amassing a loyal consumer base through aggressive branding and consistent quality.
However, in October 2021, the Maharashtra Food and Drug Administration (FDA) raided the premises of MB Enterprises in Thane and seized over 9.5 lakh counterfeit Nutella jars and nearly 4 lakh packaging components, including labels and containers that copied the original Nutella trade dress down to minute details.
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Court’s Findings
Despite receiving a summons, MB Enterprises chose not to appear or defend itself, leading the Court to proceed ex parte. Justice Saurabh Banerjee concluded that the defendant had deliberately copied the trademark, packaging, and visual elements of Nutella with the intent to deceive the public and ride on Ferrero’s goodwill.
The Court emphasized the public health risks, especially for children, associated with counterfeit food products manufactured in unhygienic conditions. It also cited the landmark judgment in Cadila Health Care v. Cadila Pharmaceuticals to reinforce the need for stricter scrutiny in cases involving consumable items.
The Court awarded Rs 30 lakh in damages to Ferrero, citing the massive scale of counterfeiting (estimated at over Rs 38 crore worth of products) and the dishonest conduct of the defendant. Additionally, a permanent injunction was issued, restraining the defendant from manufacturing, packaging, or selling any product bearing the Nutella mark or deceptively similar variants.
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The Court also directed a payment of Rs 2 lakh as special costs to the Delhi High Court Bar Association’s Lawyers Social Security and Welfare Fund.
Justice Banerjee’s ruling went beyond the immediate case. Recognizing Nutella’s extensive use, international acclaim, advertising investments (Rs 3–16 crore in recent years), and consistent legal enforcement, the Court officially declared ‘Nutella’ a well-known trademark under Section 2(zg) of the Trade Marks Act, 1999.
This declaration not only vindicates Ferrero’s brand rights but also ensures broader legal protection against future misuse of the Nutella mark in India.
Case Title: Ferrero SPA v. MB Enterprises
CS(COMM) 593/2021 & I.A. 36529/2024
READ JUDGMENT HERE
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