Ferrero S.p.A. & Ors. v. Abhimanyu Prakash & Ors.

A distinctive product shape and registered shape mark can be protected against commercial copying, including the manufacture and supply of empty containers intended for counterfeit products.

SHORT DESCRIPTION ABOUT THE CASE:

This case concerns the distinctive NUTELLA glass jar and the manufacture and sale of near-identical empty jars by the defendants. The Delhi High Court considered trademark rights in product shape, commercial awareness of the brand and the availability of summary judgment under Order XIII-A CPC.

FACTS:

Ferrero and its associated plaintiffs marketed NUTELLA products in distinctive glass jars of different sizes. The plaintiffs claimed trademark rights in the NUTELLA marks, labels and the distinctive shape of the glass jar.

The plaintiffs discovered that the defendants were manufacturing and selling empty glass jars described as “NUTELLA glass jars” through IndiaMART and other commercial channels.

The defendants argued that the jars were manufactured on the basis of customer-provided designs and that the shape was commonly referred to in the industry as a Nutella jar. They denied involvement in manufacturing counterfeit finished products.

During Local Commissioner proceedings, approximately 3,05,916 empty jars were seized from premises under the control of the defendants.

FINDINGS:

The Court found that the customer-provided drawings themselves referred to the product as a “Nutella cocoa jar.” The defendants' own use of the description “NUTELLA glass jar” in their commercial activities indicated awareness of the plaintiffs' brand and goodwill.

The Court rejected the contention that the defendants were innocent first-time infringers. The scale of the manufacturing activity, the nature of the jars and the absence of evidence supporting the claim that the shape was generic were relevant considerations.

The Court also considered the availability of summary judgment where the material facts and evidence sufficiently established the infringement claim.

SUGGESTION:

Brand owners should protect distinctive product shapes through appropriate trademark and design registrations wherever legally available. They should preserve product drawings, packaging records, registration certificates, market evidence and examples of copied containers.

Manufacturers and suppliers should undertake due diligence when receiving orders for containers or packaging that reproduce a distinctive brand's shape or name. Customer instructions do not automatically remove the supplier's potential liability where the infringement is apparent.

JUDGMENT / PRINCIPLE:

The Court decreed the suit in the relevant terms, including injunctive relief and costs. The case illustrates that commercial manufacture and supply of near-identical branded containers may attract liability even where the supplier claims not to have manufactured the counterfeit finished product itself.