Delhi High Court Recognizes NUTELLA as Well-Known Trademark, Awards ₹30 Lakh in Infringement Suit

The Delhi High Court delivered a significant judgment on July 28, 2025, in favor of Ferrero S.p.A., the owner of the globally recognized ‘NUTELLA’ brand, in a trademark infringement and passing off suit against M.B. Enterprises. The Court declared ‘NUTELLA’ a well-known trademark under Section 2(zg) of the Trade Marks Act and awarded ₹30 lakh in damages along with ₹2 lakh in legal costs to Ferrero.

Ferrero S.p.A., part of the Ferrero Group established in 1946, holds the global rights to the ‘NUTELLA’ hazelnut cocoa spread brand, which was adopted in 1964. The company has registered the ‘NUTELLA’ trademark in India across multiple classes, with the earliest registration dating back to 1975. Ferrero has maintained a longstanding presence in the Indian market, celebrating 50 years of operations in India in 2014.

The dispute arose after Ferrero discovered in 2021 that M.B. Enterprises was manufacturing counterfeit ‘NUTELLA’ products under unsanitary conditions. This followed a raid conducted by the Food and Drug Administration (FDA) in Maharashtra, which resulted in the seizure of nearly one million fake units and 400,000 counterfeit packaging materials.

Ferrero initiated legal proceedings against M.B. Enterprises, alleging trademark infringement, passing off, and seeking damages. The core issues before the Court included whether the defendant’s activities constituted infringement and passing off of the registered ‘NUTELLA’ trademarks, and whether the ‘NUTELLA’ mark qualified as a well-known trademark under Section 2(zg) of the Trade Marks Act.

Ferrero asserted its prior adoption and ownership of the ‘NUTELLA’ trademark, emphasizing its global recognition and extensive use in India since at least 2009. The company contended that the defendants were distributing low-quality, fake ‘NUTELLA’ products with identical marks and packaging, misleading consumers and tarnishing the brand’s reputation. Ferrero also highlighted the health risks posed by the counterfeit products.

Further, Ferrero submitted that ‘NUTELLA’ had been recognized as a well-known trademark by international bodies such as the World Intellectual Property Organization (WIPO) and the International Trademark Association (INTA). Based on these factors, Ferrero sought a formal declaration of ‘NUTELLA’ as a well-known trademark under Indian law.

The Court noted that M.B. Enterprises failed to appear or file a defense, resulting in the admission of Ferrero’s allegations. It confirmed Ferrero’s valid and subsisting trademark registrations for ‘NUTELLA’ across multiple classes since 1975.

The Court was particularly alarmed by the FDA raid evidence, which revealed the defendant’s use of identical names, packaging, labels, and trade dress without authorization, demonstrating mala fide intent. The judgment emphasized the heightened duty of care required when dealing with edible products, citing the precedent set in Cadila Health Care v. Cadila Pharmaceuticals, to prevent consumer confusion and protect public health.

In assessing the well-known trademark status, the Court considered Ferrero’s longstanding use, substantial advertising expenditure, and market presence in India. It acknowledged that the ‘NUTELLA’ mark had acquired distinctiveness and secondary meaning, reinforced by its recognition from WIPO and INTA.

Consequently, the Court declared ‘NUTELLA’ a well-known trademark under Section 2(zg) of the Trade Marks Act. It granted a permanent injunction restraining M.B. Enterprises from using the ‘NUTELLA’ mark or any confusingly similar variants.

The Court awarded Ferrero ₹30 lakh in damages and ₹2 lakh in costs, reinforcing the protection of established trademarks against counterfeiters and underscoring the judiciary’s commitment to safeguarding consumer interests in the food sector.

Case Citation: Ferrero S.p.A. & Ors v. M.B. Enterprises, CS(COMM) 593/2021, Delhi High Court, decided July 28, 2025. The full judgment is accessible at https://indiankanoon.org/doc/188981518/