Ferrero Spa & Anr. vs Shri Maa Distribution (India) ...
2017 Latest Caselaw 2601 Del

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*      IN THE HIGH COURT OF DELHI AT NEW DELHI

%                          Judgment reserved on: 19.05.2017
                          Judgment delivered on: 23.05.2017

+      CS(OS) 1763/2010

       FERRERO SPA & ANR.                                  ......Plaintiffs

                    Through:     Ms. D. Neha Reddy, Ms. Mrinali Menon,
                                 Advocates.

                    Versus


       SHRI MAA DISTRIBUTION (INDIA) PVT. LTD. & ANR

                                                           ...Defendants

                    Through:     None.
CORAM:
HON'BLE MS. JUSTICE INDERMEET KAUR

INDERMEET KAUR, J.

1. The present suit has been filed by the plaintiffs against the defendants

for permanent injunction restraining infringement of trademarks/trade dress,

passing off, dilution of well-known trademark, delivery up and damages.

2. The Plaintiff No. 1, Ferrero SpA is a company incorporated under the

laws of Italy and Plaintiff No. 2, Ferrero India Private Limited is the Indian

subsidiary of Ferrero International which along with Ferrero SpA belongs to

the Ferrero Group. The Plaintiff No. 1 is one of the 4 biggest confectionary

producers worldwide and employs more than 22,000 people. The plaintiffs

are the proprietors of various trademarks including FERRERO ROCHER,

FERRERO ROCHER (trade-dress), NUTELLA, TIC TAC and KINDER

amongst several others. The annual sales turnover of Ferrero Rocher is

nearly one billion US Dollars. Plaintiff, registered under the trademark of

FERRERO ROCHER (Word Mark) being Registration No. 802131 in the

year 1998 in Class 30; also registered under the trademark of FERRERO

ROCHER (Label with Praline Device), being Registration No. 1261994 in

the year 2004 in Class 30 and also registered under the trademark of Praline

Device in crushed wrapper and fluted cupcake wrapper, being Registration

No. 1678048 in the year 2008 in Class 30 has a unique packaging style and

are recognizable from a distance by consumers.

3. The Defendant No. 1, Shri Maa Distributors, is the importer of

products with an identical trade dress bearing the marks "CHERIR" and

"GINNUO" and the Defendant No.2, Tasty Choco Company, is a Chinese

manufacturer indulging in manufacturing, retailing and exporting the

impugned products to India vide Defendant No. 1.

4. In June, 2010 it came to the knowledge of the plaintiffs that the

Defendant No. 2 has been supplying the impugned goods to importers such

as Defendant No. 1. The Defendant No.2 also operates the website

www.tastychoco.com.

5. Present suit has accordingly been filed praying for a relief of

permanent injunction seeking a restraint on the infringement of the

trademarks /trade dress, passing off, dilution of well-known trademark,

delivery up and damages.

6. In the course of proceedings of the suit, on 14.09.2010 an ex-parte ad-

interim injunction was granted in favour of the plaintiff and against the

defendants restraining them from marketing or selling any chocolates or

confectionary items under any mark or representations through labels or any

visual medium including the devise and distinctive wrapping which the

plaintiffs are using in respect of Ferrero Rocher mark as regards label and

shape and distinctive features of the chocolate sold by the Plaintiffs.

7. A compromise settlement was entered into by the Plaintiffs with

Defendant No.1 whereby the Defendant No. 1 agreed to refurbish its

packaging and exhaust its current stock accordingly. This court recorded this

compromise vide order dated 12.03.2014 and decreed the suit qua Defendant

No.1. The Defendant No. 2 was proceeded ex-parte vide order dated

7.03.2014.

8. Ex parte evidence by way of affidavit of PW-1 (Mr Pankaj Pahuja) has

been filed. PW-1 has reiterated all the averments made in the plaint and has

proved various documents delineated as Ex.PW1/1 to Ex.PW-1/30 and

documents shown as Ex. PW1/8, Ex. PW1/18, and Ex. PW1/23 stands de-

exhibited being photocopies and stands marked D, E and F, respectively.

9. The plaintiff has established and proved its case. In view of the

testimony of the witness of the plaintiff i.e. PW-1 as also documentary

evidence adduced and proved in the court, the plaintiff is entitled to a decree

of permanent injunction qua Defendnat No. 2. It is clear that the defendant's

prima facie have copied the plaintiff's trademark as well as trade dress of the

plaintiff's Ferrero Rocher chocolate specialities. The plaintiffs have held a

strong presence in publications such as Forbes Magazine, The Economist etc

all of them rankin the Plaintiff's Ferrero group amonsgrt the top 5

confectionary chocolate manufacturers making it a prominent manufacturer

known to customers worldwide.

10. Moreover, this Court in its judgement dated 13.03.2014 in the matter

Ferrero SPA & Anr V. Raj Baid & Ors, held that FERRERO ROCHER

trademark is well known under the provisions of Section 2 (1) (zg) and

Section 11 (6) of the Trade Marks Act, 1999. Therefore, this adoption of the

Plaintiffs' trademark by the Defendant no. 2 is fraudulent and has caused

injury, loss and damage to its name, business, goodwill and reputation.

11. Accordingly, the suit of the Plaintiffs' is decreed and by way of the

permanent injunction, the Defendnat No. 2, its partners or proprietor, their

principal officers, servants and agents and all others acting for and on their

behalf are restrained from selling, offering for sale, advertising, directly or

indirectly dealing in any manner with goods having crushed gold wrapper

and fluted brown cupcake holder, the FERRERO ROCHER label, any other

disceptively similar label, device or ticket, in combination or separately

diamond pattern boxes or any other deceptively similar trademark with the

plaintiff's and amounting to infringement/passing off the plaintiff's

registered trademarks as also from misrepresenting or holding out to be

connected or related to the plaintiff in any manner whatsoever.

12. The Defendant is also directed to destroy all the products, container

boxes, labels, wrappers, stickers, and stationery or any other material of the

Defendants containing the infringed trademarks of the Plaintiff.

13. In the above context, the Plaintiffs' suit is decreed for permanent

injunction qua Defendnat No. 2. Cost of the suit also be granted in favour of

the plaintiff. Decree sheet be drawn. File be consigned to record room.

INDERMEET KAUR, J

MAY, 23, 2017