“Nutella” declared as a well-known trade mark in India

Almost every household has purchased (or at least heard of) “Nutella” before. This brand of hazelnut cocoa spread has been delighting taste buds and has been used in countless baking and dessert recipes over several decades. 

Recently in India, Ferrero International SpA, the owner of the “Nutella” brand, won a trade mark infringement action against Thane-based MB Enterprises (“Thane”) for dealing with counterfeit “Nutella” products. The suit was filed following a raid on the said counterfeit products by the Food and Drug Administration of Maharashtra. 

The Delhi High Court ordered Thane to pay damages and costs, and issued a permanent injunction restraining Thane from further dealing with counterfeit “Nutella” products. Furthermore, the 'Nutella' trademark was officially recognised as a well-known mark under India’s Trade Marks Act, reflecting its longstanding and widespread use globally since 1964, and in India since 2009.

India’s Trade Marks Act, section 11(6) provides a list of non-exclusive factors that the Registry takes into account when considering whether a trade mark is indeed well-known. This includes the duration, extent and geographical area of any use and promotion of the trade mark, the knowledge or recognition of the trade mark in the relevant section of the public, as well as any record of successful enforcement of rights in that trade mark.  

In Singapore, the “Nutella” trade mark was similarly declared as well-known, following the case of Ferrero SpA v Sarika Connoisseur Cafe Pte Ltd [2011] SGHC 176. Of note, the list of non-exclusive factors under section 2(7) of Singapore’s Trade Marks Act, in determining whether a trade mark is well-known in Singapore, is also similar to section 11(6) of India’s Trade Marks Act. 

Some trade marks such as “Nutella”, “TikTok” and “GMAIL” are not only deemed “well-known in Singapore” but “well-known to the public at large in Singapore”. The difference is that the former only requires recognition by any relevant sector of the public in Singapore, whilst the latter requires recognition by most sectors of the public in Singapore. 

Overall, the recognition of “Nutella” as a well-known trade mark in the relevant countries of India and Singapore is part of a broader global trend conferring strong legal protection to well-known trade marks deserving of such protection. This leads to assurance for brand owners on the value of their brand equity, and also reminds brand owners of the importance of maintaining evidence of goodwill and reputation in order to leverage well-known trade mark provisions at the relevant juncture.