Delhi High Court Declares “Nutella” a Well-Known Trademark

The Delhi High Court has officially recognized “Nutella” as a well-known trademark, acknowledging its global reputation and strong brand identity in India. The decision came in a case filed by Ferrero S.p.A., the Italian company that owns the Nutella brand, against a Thane-based entity that was found manufacturing and distributing counterfeit products resembling the original Nutella spread. The court held that Nutella has attained iconic status through its consistent market presence, extensive advertising, and consumer recognition, fulfilling the statutory requirements under Indian trademark law to be classified as a well-known mark.

Justice Saurabh Banerjee, who presided over the matter, emphasized that Nutella is recognized across the globe and enjoys significant goodwill and consumer trust. He noted that the hazelnut cocoa spread has been sold worldwide since 1964 and is widely associated with Ferrero in the minds of the public. The judge highlighted the product’s unique trade dress, packaging, and branding, which have become instantly recognizable and are associated with quality and consistency. Given these factors, the court concluded that Nutella deserves protection under Section 2(zg) of the Trade Marks Act, 1999, which defines well-known trademarks and grants them broader protection against infringement.

The case arose when Ferrero discovered that a company operating out of Thane was selling counterfeit Nutella products using deceptively similar branding, labels, and packaging. A raid conducted by state authorities resulted in the seizure of nearly one million counterfeit units, along with associated packaging materials. The court found that the counterfeit goods posed a serious health risk to consumers and caused damage to the brand’s reputation. It held that such activities not only violated trademark rights but also constituted a significant public harm, especially given that the products were food items directly consumed by the public.

In its ruling, the court permanently restrained the defendant from manufacturing, distributing, or selling any products bearing the Nutella name or similar packaging. The infringing party was ordered to pay ₹30 lakh as damages to Ferrero, along with ₹2 lakh to cover litigation costs. The judgment reiterated the importance of protecting well-established trademarks, particularly in industries where counterfeiting can have health and safety implications.

Justice Banerjee further pointed out that Ferrero had presented extensive evidence of Nutella’s global and Indian market presence, including documents related to international trademark registrations, advertising campaigns, and past enforcement actions. The court also noted that global organizations such as the World Intellectual Property Organization and the International Trademark Association have acknowledged Nutella’s widespread reputation, which further supported the decision to classify it as a well-known mark.

The declaration of Nutella as a well-known trademark grants it enhanced legal protection under Indian law, allowing Ferrero to take stronger action against potential infringers. This judgment underscores the Indian judiciary's commitment to protecting intellectual property rights and maintaining the integrity of well-recognized brands in the marketplace.