Nutella Bags Statutory Right as a Well-Known Trademark in India!

This article was written by Padma Akila, Intellectual Property Associate at Peritum Partners.

In a recent judgement passed by the Hon’ble Delhi High Court in the matter of Ferrero SPA and Others. v. M.B. Enterprises (CS(COMM) 593/2021 & I.A. 36529/2024), Ferrero has managed to get the prestigious recognition of being a well-known trademark in India. 

In a classic case of trademark infringement and passing off between Ferrero and one M.B. Enterprises, the hon’ble High Court acknowledged the findings of the Plaintiff with respect to the unlawful and illegal acts committed by the Defendant by way of infringing the Plaintiff’s mark “NUTELLA”. The Defendant’s marks including the words, logo, package label and trade dress had been identical to that of the Plaintiff leading to misrepresentation and likelihood of reasonable confusion among the general public.

The plaintiffs became aware of the defendant's unlawful acts when the Food & Drug Administration (FDA) assisted by local law enforcement authorities, conducted a raid at the defendant's location in Thane, Maharashtra, and seized 9,53,400 units of counterfeit “NUTELLA” products and 4,00,000 units of packaging. The defendant in this matter had conveniently refrained from appearing before the court and had not filed its written statement despite being served with copies of the plaint, which led to ex parte proceedings and subsequent orders being passed accordingly.

It is pertinent to note that the Court has yet again applied a more rigorous heightened standard of scrutiny for food products, borrowing an analogy in Cadila Health Care Limited v. Cadila Pharmaceuticals, (2001) 5 SCC 73. The Court indicated that for food products consumed by the public, particularly children, "a greater degree of care, caution as also to apply a more stringent test" to avoid public harm.

Further, the Court declared “NUTELLA” as a well-known trademark under Section 2(zg) of the Trade Marks Act, 1999, while considering the following factors:

• Long-standing and extensive use of the mark since 1946

• More than 50 years of presence in Indian markets

• Extensive marketing and unique trade dress which is associated only with that of Nutella’s and no one else

• Substantial advertising expenditure and sales figures over the years

• Prior recognition by the World Intellectual Property Organisation (WIPO) and the International Trademark Association (INTA).

  

  Photo by Jonathan Kemper on Unsplash

Benefits of registering as a well-known brand

A well-known trademark registration gives enhanced statutory protection in precluding third parties to adopt, use or register a mark that is similar to one’s well-known trademark. The protection so obtained extends across all the classes of description of goods and services. Accordingly, such registration will assist the owner of the mark in opposition proceedings, infringement and passing-off actions. Further, an application for a well-known trademark can also be filed for a mark which has not been used or registered in India, on the basis of trans-border reputation.  

Documents/Information required by the TM Office in connection with filing of a request for well-known trademark:

1.    Usage related documents establishing the duration, extent and geographical area of the use and promotion of the said trademark.  

2.    Copies of registrations of the said trademark in India and other jurisdictions. 

3.    Annual sales turnover of the applicant’s business based on the subject trademark duly corroborated. 

4.    Number of actual or potential customers of goods or services under the said trademark. 

5.  Documents related to publicity and advertisement of the said trademark and the expenses incurred therefor. 

6.    Evidence as to knowledge or recognition of the trademark in the relevant section of the public in India and abroad. 

7.    Copy of judgments of any court in India or Registrar of Trademarks, if any, wherein the trademark is determined as a well-known trademark 

8.    Copy of judgments of any court or Tribunal outside India wherein the said trademark has been considered as a well-known trademark.  

Process 

1.    An appropriate request on Form TM-M accompanied by a statement of case along with all the evidence and documents relied upon is required to be filed with the Indian Trademark Office. Thereafter, the Registrar shall examine the request as well as the documents filed as per the provisions provided under sub-sections (6) to (9) of Section 11 of the Trademarks Act, 1999. Upon examination, the Registrar may call upon the applicant to furnish additional information/documents as he may desire at his discretion.

2.    Further, before determining the trademark as well-known, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objection. In case the trademark is determined as well-known, the same shall be published in the trademark journal and included in the list of well-known trademarks maintained by the Registrar.   

3.    The statutory fee payable to the Trademark Office is Rs.1,00,000 per application. 

Timeline for registration of a well-known trademark

There is no stipulated timeline provided in the Trademarks Act for the determination of a trademark as a well-known trademark in the TM Registry’s records. However, it is  estimated that this process may typically take around 10 to 12 months’ time for the Registrar to examine and/or take a decision in the matter.