Delhi High Court’s judgment, in Ferrero SpA & Ors v Abhimanyu Prakash & Ors, engages with various questions of law concerning the scope of trademark protection, the liability of upstream manufacturers, and the appropriateness of granting damages under summary judgment in commercial intellectual property disputes.
The case arose from Ferrero’s grievance that the defendants were making and selling empty glass jars that looked just like the Nutella jar, which helped others counterfeit and violate Ferrero’s registered shape trademark.
Nutella jar shape mark protection
The main question before the court was whether the shape of a product’s container, without any word mark or label, can be protected as a trademark?
The court confirmed that a registered shape mark has the same legal protection as any other trademark under the Trade Marks Act, 1999. It found that the Nutella jar, after many years of exclusive use, had become so distinctive and recognisable that consumers linked its shape to Ferrero.
As a result, the court decided that making and selling jars that closely resemble the Nutella jar could be trademark infringement, even if the word “NUTELLA” is not used.
Another key issue was whether making and selling empty containers could be trademark infringement if the defendants were not selling fake Nutella themselves.
The defendants argued they were only making generic glass jars for others, and were not involved in selling counterfeit Nutella.
But the court disagreed, explaining that trademark infringement is not merely about selling finished, counterfeit goods. If packaging or containers look very similar to a protected trademark and are used in a way that takes advantage of the brand’s reputation, this can also be infringement.
The court stressed that helping others counterfeit by supplying infringing packaging is a violation of trademark law.
Summary judgments for infringement
The court also had to decide if the case could be resolved through summary judgment under order XIII-A of the Code of Civil Procedure, 1908, which applies to commercial cases.
Based on Su-Kam Power Systems Ltd v Kunwer Sachdev, the court stated that a full trial is not always needed in commercial IP disputes. If the defendants have little chance of winning and the evidence is clear, summary judgment is allowed and even preferred. In this case, the defendants agreed to a permanent injunction and the documents supported a quick decision.
The court also examined the distinction between an “innocent infringer” and a “knowing infringer”. The defendants portrayed themselves as first-time, innocent infringers, arguing that they lacked awareness of Ferrero’s rights.
The court rejected this plea, noting that knowledge can be inferred from surrounding circumstances, including the defendants’ description of the product as “Nutella jars”, drawings and emails referring specifically to Nutella, and the widespread reputation of the Nutella brand in India.
On this basis, the court held that the defendants were first-time knowing infringers.
Limits in awarding IP damages
Finally, the court discussed the rules governing the award of damages and costs in summary IP cases, particularly under rule 20 of the Delhi High Court Intellectual Property Rights Division Rules, 2022.
The court said it could award compensatory and punitive damages, but only if there were proper pleadings and solid evidence.
In the absence of proof of collusion or direct involvement by the defendants, the court refused to accept Ferrero’s claim for damages based on speculative calculations of losses allegedly arising from the sale of counterfeit finished products by third parties.
Instead, the court adopted a proportionate approach by ordering delivery of the seized infringing jars and awarding partial legal costs, balancing deterrence with fairness.
Protecting shape marks, IP rights
In summary, this judgment addresses key legal issues concerning the protection of shape trademarks, manufacturers’ liability for infringement, and the increasing use of summary judgment in commercial IP cases.
It shows that packaging and trade dress constitute important intellectual property rights, and that courts will act promptly when infringement is obvious – but will be careful to award damages only on strong evidence.
Authors: Manisha Singh and Kratika Patel
First Published by: IBLJ here