Ferrero SPA & Ors. v. Abhimanyu Prakash & Ors.

1. The present application has been filed by the Petitioner under Order XIII-A Rules 3, 6(1)(a) and 8 read with Section 151 of the Code of Civil Procedure, 1908 [‘CPC’] seeking summary judgment.

2. Plaintiffs have filed the present suit seeking a decree of permanent injunction restraining the Defendants from, inter alia, infringing the Plaintiffs’ registered trademarks, including ‘ ’ [‘NUTELLA glass jars’] ‘NUTELLA/ ’ and distinctive labels associated with the mark ‘NUTELLA’, passing off counterfeit goods under the identical mark along with other ancillary reliefs and for damages and costs.

3. The facts which have come on record reveal that Defendant Nos. 1 to 3 are manufacturers and sellers of empty NUTELLA glass jars which is a near identical copy of the original Nutella jar. Defendant Nos. 1 to 3 state that the impugned NUTELLA glass jars manufactured by them is referred to as Nutella jar in their industry and the said Defendants were offering these glass jars on their website as NUTELLA glass jars. Defendant No. 4 admits offering the impugned NUTELLA glass jars for sale on its own website and third-party e-commerce websites as NUTELLA glass jars.

4. Mr. Pravin Anand, learned counsel for the Plaintiffs has set out the case of the Plaintiffs as under: - 4.[1] 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. 4.[2] The Plaintiffs coined and adopted the trademark NUTELLA for the first time in or about 1964 and began using it for their novel hazelnut cocoa spread. It is stated that in the same year the iconic Nutella jar was created with a unique colour combination and logo ‘ / ’. 4.[3] The Plaintiffs hazelnut cocoa spread is sold in unique wide neck glass jars with a plastic white cap ‘ ’ and the Plaintiff holds registration for this mark as per TM no. 1711197. The Defendants have manufactured near identical NUTELLA glass jars, and it is the infringement of this mark which is the subject matter of this suit. 4.[4] The marks NUTELLA,,, and the unique dress used by the Plaintiffs for the NUTELLA has been continuously and exclusively used for more than 50 years and consequently the said trademarks have attainted secondary significance amongst the consumers and members of the trade who identify the product and trademarks solely with the Plaintiff. 4.[5] The Plaintiffs are the registered proprietors of NUTELLA trademarks across various territories around the world and have obtained registration under various classes. Details of the Plaintiffs’ registered trademarks are mentioned in paragraph 20 of the plaint. 4.[6] The products of the Plaintiffs under the distinctive and proprietary NUTELLA/ trademarks and brands NUTELLA are made available for sale throughout India in different sizes, i.e. 180 ml, 350 ml and 750 ml. 4.[7] It is stated that the Defendants [Defendant Nos. 1, 2, 3 and 4] are manufacturing, supplying, exporting, making available for sale and selling empty glass jars i.e., the NUTELLA glass jar. 4.[8] The Plaintiffs learnt about the infringing activities of the Defendants in October 2022, when they came to know that the Defendant Nos. 1 to 3 were making available for sale empty NUTELLA glass jars on the ecommerce website of IndiaMart and on Defendant no. 4’s website. 4.[9] It is stated that the impugned products featured on the websites were displayed under the product description ‘NUTELLA glass jar’ and were being manufactured, marketed, offered for sale, and sold by the Defendants to third parties/commercial entities through both online and offline channels. These NUTELLA glass jars are purchased by the third parties for manufacturing counterfeit Nutella products and the Plaintiff has also separately instituted suits i.e., CS(COMM) 43/2021 and CS(COMM) 917/2022 against such third parties.

4.10 It is stated that the impugned glass jars manufactured by the Defendants have an embossing of ‘E20 O A’, which is the same embossing which has been found on the counterfeit products recovered from the third parties in CS(COMM) 43/2021 and CS(COMM) 917/2022. The Plaintiff therefore verily believes that Defendants are either closely associated with the third-parties manufacturing counterfeit Nutella products, or it is facilitating the counterfeit products by manufacturing the empty NUTELLA glass jars. Submissions on behalf of the Plaintiffs

5. Mr. Anand, learned counsel for the Plaintiffs, at the outset states that he is praying for the decree of permanent injunction against all the Defendants and is pressing for damages and costs, in this application, only against Defendant Nos. 1 to 3 and not Defendant No. 4. 5.[1] He referred to page no. 218 of the Plaintiff’s documents, filed along with the plaint, and stated that the shape of the bottle i.e., NUTELLA glass jar is itself a registered trademark under class 30, without the word NUTELLA on it. 5.[2] He stated that the local commissioners conducted inspections on 09.03.2023 and discovered infringing empty NUTELLA glass jars at the premises of Defendants Nos. 1 to 3. At the warehouse[1] [‘location 1’], 3,05,916 empty jars of 350 ml and 650 ml sizes, along with some cartons bearing the mark ‘NUTELLA’, were sealed. At another location[2] [‘location 2’], the commissioners learnt that the firm was manufacturing the glass jars for export to Dubai and recovered, from this location, 9 empty NUTELLA jars with embossing ‘E20 O A’ and 188 brochures referring to Nutella jar/choco jars, all of which were sealed and released on Superdari. At the manufacturing unit[3] [‘location 3’], no infringing goods or moulds were specifically identified, though the factory was fully operational. 5.[3] He stated that a total of 3,05,916 glass jars were sealed and seized by the Local Commissioners, having an estimated value of Rs. 62.84 lakhs and relies upon the computation given in its written note dated 03.11.2025. He stated that the impugned NUTELLA glass jars have an embossing ‘E20 O A’ towards the base, which does not belong to Plaintiffs Nutella jars. Located at: 48, Village Khanjapur, Cameli Bagh, Laxmi CNG Kit Street, Agra Road, Firozabad, Police station: Tundla Police Station. Located at: GM Overseas, Bapu Compound, Opposite Jayna Cold Storage, Agra Road, Firozabad, Police station: Line Paar Police Station. Located at: Durgesh Block And China Glass Works -154/2 Village, NH[2], behind Jain Dharm kanta, Dholpura, Firozabad,Police station: Line -Paar Police Station. 5.[4] He relied on the Document No. 2 which is a sales invoice dated 21.10.2020 drawn on a legal entity in UAE, filed by the Defendant Nos. 1 to 3 along with their reply to the I.A. 2292/2023, and stated that the invoice shows that the Defendant Nos. 1 to 3 have been conducting their business of manufacturing and sale of the impugned NUTELLA glass jars for at least past 29 months. He states that if the figure of Rs. 62.84 lakhs is assumed as the monthly turnover then for 29 months the Defendant Nos. 1 to 3 would have recorded a turnover of Rs. 18.22 crores. 5.[5] He referred to the drawings and email dated 27.07.2020 relied upon with the written statement to contend that the Defendant Nos. 1 to 3 were fully aware that they were manufacturing impugned NUTELLA glass jars as this is specifically mentioned in the drawings as provided in the said email. He states that thus the Defendant Nos. 1 to 3 were possessing both actual and constructive knowledge that by manufacturing the impugned NUTELLA glass jars they were infringing on the Plaintiffs’ trademarks. 5.[6] He stated that Defendant Nos. 1 to 3 have been engaged in the same line of business for a considerable period and are, therefore, not a first-time infringer, which also demonstrates that the Defendant Nos. 1 to 3, with full knowledge of the Plaintiffs’ proprietary rights, have wilfully infringed them, and accordingly, an award of damages is warranted. 5.[7] He stated that the Plaintiffs have calculated that if the impugned empty NUTELLA glass jars manufactured by Defendant Nos. 1 to 3 are used by third parties for selling counterfeit NUTELLA products, the value of the finished products sold by the third parties for the period of 29 months would be Rs. 533.10 crores. He relied upon the computation given in the written note dated 03.11.2025. He states that this is the value of the loss that the Plaintiffs would have suffered. 5.[8] He stated that Rule 20 of the Delhi High Court Intellectual Property Rights Division Rules, 2022 [‘IPD Rules’] expressly empowers the Court to award damages or direct rendition of accounts of profits in IP proceedings, recognizing the right of a successful IP holder to claim compensatory, exemplary, or punitive damages commensurate with the nature and extent of infringement. 5.[9] He submitted that by applying Rule 20 of the IPD Rules, the Plaintiffs are entitled to damages and costs of illicit profit margins made by the Defendant Nos. 1 to 3 at 10% margin at value of production level amounting to Rs. 1.82 crores and 10% margin at value of finished product level amounting to Rs. 53.[3] crores. Additionally, he submitted that the Plaintiffs are also entitled to Rs. 31,05,876/- for the expenses incurred by the Plaintiffs as the costs of these proceedings. Submissions on behalf of the Defendant Nos. 1 to 3

6. Mr. Samrat Nigam, learned senior counsel for the Defendant Nos. 1 to 3, at the outset, submitted that he has no objection to the permanent injunction being granted in terms of the prayer clause 80 (i) to (iv) of the plaint but is objecting to the decree of damages and actual costs prayed for by the Plaintiffs. 6.[1] He stated that Defendant Nos. 1 to 3 are manufacturers and/or traders of generic empty glass jars, empty glass bottles and empty liquor bottles. He stated that Defendant Nos. 1 to 3 do not make NUTELLA’s plastic caps, and only produce plain, unbranded glass jars on job-work orders for one Mr. Shashikant Dharane, Quality Control Manager & Production In-Charge for Al Ameera Foodstuff Ind. LLC (UAE), using designs provided by that company. He stated that Defendant Nos. 1 to 3 never used or embossed the Plaintiffs Nutella marks on any glass jar and they are not in the competing business with that of the Plaintiffs in any manner. 6.[2] He stated that the Defendant Nos. 1 to 3 never copied any embossing code pertaining to the Plaintiffs, and the code on their jars differs entirely and the code ‘E20 O A’ was added only at the customer’s request. 6.[3] He stated that the empty glass jar shown in the plaint is a common industry design, often referred to generically as a ‘Nutella jar’. He stated that Defendant Nos. 1 to 3 acted bonafide while carrying out the manufacturing for the customer on the basis of the order received on e-mail dated 27.07.2020 and manufactured the impugned glass jars on the basis of the design provided by the customer as annexed with the said e-mail. 6.[4] He submitted that Defendant Nos. 1 to 3 do not have any role in manufacturing of any alleged counterfeit products and emphatically denies any wrongdoing. And therefore, the claim of damages raised by the Plaintiffs on the alleged values of finished product is misconceived. He stated that Defendant Nos. 1 to 3 have made a full disclosure of UAE entity which placed the order on the Defendant Nos. 1 to 3, however the Plaintiff elected not to pursue any claims against the said UAE entity. 6.[5] He contended that Defendant Nos. 1 to 3 are first time innocent infringers and placed reliance on the law laid down by the ccordinate Bench in Koninlijke Philips and Ors. v. Amazestore and Ors.[4] and Aero Club v. M/s Sahara Belts[5], to contend that the suit be disposed of vis-à-vis the 2019 SCC OnLine Del 8198, at paragraph nos. 40 and 41. 2023 SCC OnLine Del 7466, at paragraph nos. 23 to 25. Defendants by passing a decree of permanent injunction only and without imposing any damages or costs. He emphasizes that Defendant Nos. 1 to 3 have owned up to their default and have not protracted the proceedings and therefore applying the principles laid down in the aforesaid judgments, the Court may not impose damages. Proceedings in the suit

7. The Coordinate Bench of this Court vide order dated 06.02.2023 and 08.02.2023, granted an ex-parte ad-interim injunction against the Defendants restraining them from dealing with the impugned ‘NUTELLA glass jars’. Vide order dated 06.02.2023, the Court also appointed three Local Commissioners to inventorize and seize infringing material found at the premises of Defendant Nos. 1 to 3.

8. All the Defendants duly entered their appearances on 17.03.2023 and Defendant Nos. 1 to 3 filed their written statement dated 08.04.2023 and Defendant No. 4 filed its written statement dated 09.05.2023.

9. On 12.03.2024, the parties on making joint request before the Court, was sent to the Delhi High Court Mediation and Conciliation Centre for amicable settlement of disputes, however, the Mediation attempts were unsuccessful as per the Mediation report dated 17.09.2024.

10. On unsuccessful attempt to settle the matter, the Plaintiffs filed the present application seeking summary judgment against the Defendants.

11. Vide order dated 12.08.2025, based on the submissions made by Defendants, the injunction order dated 06.02.2023 was made absolute.

12. Vide the same order the Defendant Nos. 1 to 3 had also adopted their written statement as a reply to the captioned application. Findings and Analysis

13. This Court has heard the learned counsels for the parties and perused the record.

14. At prayer clause 78(ii) of the captioned application, the Plaintiffs have also sought a declaration of their trademark NUTELLA a well-known mark, however neither the Plaintiffs advanced any arguments with respect to this prayer, nor this Court is deciding on this issue of declaration of well-known mark. Therefore, through this judgment, this Court is only adjudicating the Plaintiffs prayers of permanent injunction and damages.