Delhi High Court recognises Nutella as ‘well-known trademark’

New Delhi: The Delhi High Court has formally recognised “Nutella” as a well-known trademark, stating that the popular hazelnut cocoa spread is acknowledged globally and not limited to Indian markets, as per the report.

“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,” observed Justice Saurabh Banerjee, as reported by Live Law.

The judgement was passed in a suit filed by Ferrero Spa, the Italian company behind Nutella, alleging trademark infringement by an Indian entity that was said to be manufacturing and distributing counterfeit Nutella products. According to the court, these fake goods carried identical marks, packaging, and trade dress associated with the original Ferrero brand.

Justice Banerjee noted that Nutella had already been declared a ‘well-known trademark’ by both 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 judgement stated.

Ruling in favour of Ferrero Spa, the court raised concerns about the potential public harm posed by counterfeit products, especially since Nutella is widely consumed by children and families.

“Since the counterfeit products of the defendant under the very same trademark of the plaintiffs 'NUTELLA' are available in the open market, without any checks and balances with ease, the same needs to be regulated as it can be harmful for human consumption. If not stopped, the same can cause serious public harm. This can also result in dilution of the long-standing reputation and goodwill of the plaintiffs,” the court noted.

It further added that the judiciary has a heightened responsibility when adjudicating disputes involving edible goods. “While dealing with edible items for human consumption, the Court owes a duty of exercising a greater degree of care, caution as also to apply a more stringent test to avoid any possibility or likelihood of confusion between different edible products amongst the general public,” the court said, according to the report.

The defendant was permanently restrained from manufacturing or selling counterfeit Nutella products. Additionally, the court directed the company to pay Rs 30 lakh in damages and Rs 2 lakh as legal costs to Ferrero Spa.