Delhi HC Recognises ‘Nutella’ as Well-Known Trademark in Trademark Infringement Suit Filed by Ferrero

The Delhi High Court has recently declared “Nutella”, a hazelnut and cocoa spread, as a well-known trademark under Section 2(zg) of the Trade Marks Act, 1999.

The order was passed by a bench led by Justice Saurabh Banerjee while dealing with a case filed by Italian confectionery giant Ferrero seeking a permanent injunction, damages, and a declaration of ‘Nutella’ as a well-known trademark.

In a 15-page judgement, the court said, “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. The plaintiffs have been able to cross the threshold of their registered trademarks ‘NUTELLA’/ being declared as ‘well-known trademark’ as per Section 2(zg) of the Act.”

 High Court also noted that the trademark of the plaintiff has already been declared a ‘well-known trademark’ by the World Intellectual Property Organization and the International Trademark Association.

“In view of the aforesaid, this Court has no hesitation in declaring the trademarks ‘NUTELLA’/ of the plaintiffs as ‘well-known trademark’ respectively under Section 2(zg) of the Act,” the court said.

It was submitted that the plaintiffs are part of the world-renowned Ferrero Group, established in the year 1946 and currently one of the leading chocolate producers and confectionery companies in the world. The plaintiffs’ products are sold across the globe in over 170 countries, either directly or through authorised distributors, under its popular brands.

On October 29, 2021, Ferrero received a letter from the Food and Drug Administration (FDA) in Maharashtra, informing them that M.B. Enterprises was found manufacturing fake NUTELLA under unhygienic conditions.

The FDA then seized over 9.5 lakh counterfeit jars and 4 lakh packaging units, including jars, lids, and labels, from the defendant's Thane premises.

 Court said that it was shocking that the defendant was using the identical name, identical packaging, identical labels, and identical trade dress without any authorisation/permission/consent of the plaintiffs.

"In fact, the plaintiffs’ trademark ‘NUTELLA’ completed 50 years of its presence in the Indian market in the year 2014. Thus, 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 court noted.

Noting that the defendant’s intent was mala fide, the Court said," It was/is guilty of using the registered trademarks of the plaintiff and clandestinely carrying on manufacturing/offering/selling/marketing the impugned products with an intent to somehow reflect that it was the plaintiffs and/or connected with them in some manner, as also to ride upon the well-established goodwill and reputation of the plaintiffs."

It added that while dealing with edible items for human consumption, there’s a duty of exercising a greater degree of care and caution, as well as to apply a more stringent test to avoid any possibility or likelihood of confusion between different edible products amongst the general public.

Emphasising that due diligence and circumspection are necessary, the Court said any deceptive similarity and confusion between trademarks for products involving consumables could have dangerous implications and cause detriment to the public at large.

Reliance was placed on the Supreme Court’s judgment in Cadila Health Care Limited vs Cadila Pharmaceuticals, wherein, although the issue was regarding pharmaceutical products, the same analogy was extended to trademarks and products involving food items and consumables. The Court observed that it has to tread with utmost care and caution.

“Accordingly, the present suit is decreed in the aforesaid terms and is disposed of along with the pending application,” the Court added.

For Plaintiffs Mr. Pravin Anand, Ms. Vaishali R Mittal and Mr. Shivang Sharma,

For Defendants: None

Case Title: Ferrero SpA & Ors v. M.B. Enterprises

Order Date: July 28, 2025

Bench: Justice Saurabh Banerjee