Ferrero Spa & Anr. v. Piyush Devangan & Anr.

1. This suit is filed seeking a decree of permanent injunction restraining the defendants etc. from dealing in any manner with the confectionery products which are look a likes of the plaintiffs’ FERRERO ROCHER chocolate specialties sold under the mark/name 'D-Lizie' and/or any other goods under the trade dress as stated in paragraph 13 of the plaint. Other connected reliefs are also sought.

2. It is the case of the plaintiffs that the plaintiffs’ chocolates are sold under the trade mark FERRERO ROCHER at worldwide level and are amongst the best known confectionery products in the world. The annual sales turnover of FERRERO ROCHER is said to be nearly one billion- US Dollars. Consumers and the trade alike identify and recognize the products of the plaintiffs from a distance owing to the distinct and stunning packaging style of FERRERO ROCHER chocolate specialties which have the 2018:DHC:551 following unique elements: “a) The rounded crushed sold wrappers; b) A white sticker on individual products; c) Each resting in a fluted brown coloured cupcake shaved holder; d) These uniquely packaged individual chocolates are further packed in transparent boxes which clearly show the contents of the box without opening it; e) Bearing a white label on the lid with the image of chocolates; f) Unique shape and packaging of the transparent box with soft round edges: (g) Manner of packaging of the chocolates- sixteen chocolates packed together in two floors in the transparent box” Hence, it is pleaded that the plaintiffs’ trademarks and trade dress are well known and have been used for several decades and have become a characteristic part of identification of the FERRERO ROCHER chocolate specialities.

3. Relevant details of the plaintiffs’ trademarks and its registrations are given in para 6 of the plaint. It is also pleaded that millions of dollars worldwide, including in India, have been spent on the promotion and publicity of the FERRERO ROCHER chocolate specialties under the trade dress as stated above. Statement of sales turnover in India for the years 2008 to 2013 would be in excess of 1130 crores. It is pleaded that the plaintiffs’ FERRERO ROCHER trademarks and trade dress have acquired a "well known status" around the world including in India.

4. Reliance is placed on the judgment of this court in the case of Ferrero Spa & Anr. v. Raj Baid & Ors., CS(OS) 404/2012, decided on 13.03.2014. The court held as follows: “21........ The plaintiffs have established that the plaintiffs are the registered proprietor of the trademark FERRERO ROCHER (word as well as device). Copies of registration certificates have been exhibited as Ex. PW-1/10 and Ex. PW-1/11. The plaintiffs have filed printouts from various websites, Ex.PW-1/5, showing that Ferrero Group is one of the 4 biggest confectionery producers worldwide and is ranked amongst the top 50 most reputable companies in the world. Plaintiffs have also filed a web printout, Ex.PW-1/6, with regard to the packaging style of the plaintiffs’ product. Ex.PW-1/12 is the print out of the case brief of a judgment of Supreme People’s Court of China, recognizing plaintiffs’ right in the FERRERO ROCHER trademarks and trade dress by several foreign Courts. The plaintiffs have also placed on record web printouts exhibited as Ex.PW-1/14 and PW-1/15 to show the global presence of the plaintiffs’ trade mark on the internet as well. The plaintiffs have also filed printouts of the articles in leading Indian newspapers about FERRERO ROCHER specialties, Ex.PW-1/21. Plaintiffs have also filed Ex.PW-1/22, a copy of the Financial Times article dated April 25, 2013 denoting the goodwill and reputation of the Plaintiffs. Plaintiffs have also filed Ex.PW- 1/23, copies of the orders passed by this court in their favour. The plaintiffs have also established that they have acquired the status of “well known mark” by virtue of various factors such as use of its trade mark and trade dress since as long back as 1982 and its subsequent registration, its wide-spread business across numerous countries, the immense goodwill and reputation acquired by it around the world, the wide scale advertising and promotional activities carried out by plaintiff and its massive turnover on annual basis.

22. This Court is of the view that the plaintiffs have proved beyond doubt that the plaintiff is the registered proprietor of the trademark FERRERO ROCHER as well the trade dress and hence the plaintiffs have the exclusive right to use the trademark including trade dress of FERRERO ROCHER.”

5. It is pleaded that the plaintiffs recently through a market survey became aware that the defendants are manufacturing and selling look alikes of the plaintiffs’ FERRERO ROCHER chocolate specialties under the name D-Lizie. The impugned chocolate of the defendants violate not only the trademark registration of plaintiff No.1 but also the well known trade dress of the plaintiffs’ FERRERO ROCHER chocolate specialties under the name D-Lizie. It is pleaded that the manufacture and sale by the defendants of the look-alikes of the plaintiffs’ FERRERO ROCHER chocolate specialties under the mark/name 'D-Lizie' is in violation of the plaintiffs statutory and common law rights in India with respect to the said products. It is submitted that the defendants, by means of their manufacturing, selling and dealing in the impugned products are infringing the registered trademarks of plaintiff No.1. They not only copied the trade dress of the individual pieces of the FERRERO ROCHER chocolate specialties but have also copied the overall getup and the unique aspects of the packaging of the plaintiffs’ said product.

6. The plaintiffs have filed evidence by way of affidavit on behalf of Mr.Pankaj Pahuja as PW[1] and Investigator Sh.D.C.Sharma as PW[2]. Mr.Pankaj Pahuja has exhibited the documents as PW1/1 to PW1/35.

7. The defendants were served but none had appeared and they were proceeded ex-parte on 29.04.2015.

8. Keeping in view the above averments in the plaint and the evidence led by the plaintiffs, it is quite clear that the defendants are infringing the statutory and common law rights of the plaintiffs with respect to the said products and the trade dress. Accordingly, a decree is passed in favour of the plaintiffs and against the defendants in terms of the prayer para 24(i), (ii),

(iii) and (iv) of the plaint. The plaintiff shall also be entitled to cost as per bill of cost filed by the plaintiff duly certified by the learned counsel for the plaintiff.

9. The suit is disposed of.

JAYANT NATH, J. JANUARY 22, 2018