NUTELLA EARNS ‘WELL-KNOWN’ TRADEMARK STATUS: WHAT IT MEANS FOR THE BRAND

INTRODUCTION

The concept of a well-known trademark plays a crucial role in modern trademark law, offering protection that extends beyond specific goods or services. The Delhi High Court has formally recognized the well-known Nutella trademark, giving it protection under Trademark law, a major event in Ferrero trademark news. This judgment marks a milestone in Nutella brand protection, ensuring its legal safeguard across all trademark classes.

The case highlights the growing importance of trademark recognition in India, especially for global brands seeking to prevent misuse and dilution. As part of India’s expanding famous trademarks, Nutella joins 117 well-known trademarks recognized to date. This article further explores the legal framework and the numerous trademark status benefits available to brand owners under the Trade Marks Act, 1999.

TMWala, with its expertise in IP law and brand protection services, assists businesses in navigating the complex process of trademark recognition, filing, and securing well-known status.

WELL-KNOWN TRADEMARK

As per Section 2(1)(zg) of the Trade Marks Act, 1999, a well-known trademark is defined as “well known trade mark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.”

Such marks carry a reputation and goodwill that transcends product categories. Their unauthorized use, even for unrelated goods can create a misleading association, thereby diluting the brand’s distinctiveness. In India, the concept of a well-known trademark has received increasing attention, especially with the globalisation of markets and the influx of international brands seeking legal protection for their intellectual property.

NUTELLA WELL-KNOWN TRADEMARK

In Ferrero Spa & Ors vs M. B. Enterprises case, the Delhi High Court ruled that Ferrero’s well-known hazelnut cocoa spread, Nutella, is a “well-known trademark” under the Trademarks Act of 1999. This decision gives Nutella protection against dilution and misuse under all trademark classifications, extending its protection beyond its particular classes of goods and services. The ruling demonstrates the growing importance of Indian courts’ focus on preventing unauthorized use of well-known global names, even in unrelated businesses.

The case arose when Ferrero S.p.A., the Italian manufacturer of Nutella, initiated legal proceedings against an Indian entity that was engaged in the manufacturing, supplying, distributing, and selling large quantities of counterfeit ‘NUTELLA’ hazelnut cocoa spread under the trademark “NUTELLA FERRERO’. The trademarks, labelling, and trade dress of Ferrero’s original product were all the same. Ferrero sought an injunction, and the Delhi High Court made a formal declaration that “Nutella” is a well-known brand under Section 11(6) of the Trade Marks Act, 1999, as a result of this improper use.

Evidence Submitted by Ferrero to support their claim: Ferrero submitted substantial evidence, including:

• Global and Indian sales figures
• Marketing expenditures
• Trademark registrations in over 160 countries
• Consumer surveys
• Extensive social media presence
• Judicial precedents from foreign jurisdictions

The Court’s Findings

Justice Prathiba M. Singh, the Delhi High Court, provided a thorough analysis and agreed with Ferrero’s arguments. According to the Court, Nutella satisfies the criteria outlined in Section 11(6) of the Trademarks Act, 1999, which offers a thorough list of criteria for determining a well-known mark.

Key findings by the Court included:

• Widespread Recognition: Since it began marketing in India in 2009, the Nutella brand has gained a lot of customer familiarity.
• Global Reputation: Thanks to international branding and advertising initiatives, its reputation transcends national borders.
• Indian Market Presence: For more than ten years, the brand has maintained an active presence in India through promotional efforts and internet accessibility.
• Bad Faith Usage: Unauthorized third-party use of “Nutella” was perceived as an effort to capitalize on the brand’s well-established reputation.

Accordingly, the Court not only granted injunctive relief but also officially declared Nutella as a “well-known trademark” under the Trademarks Act, 1999.

NUTELLA BRAND PROTECTION

This judgment reaffirms the robust legal framework available in India for brand protection and the proactive role played by Indian courts in curbing brand dilution. By officially recognising Nutella as a well-known trademark, the Delhi High Court has ensured that its protection now extends beyond the specific food category, thereby disallowing any unrelated business from misappropriating the name to benefit from its reputation.

The recognition also sets a benchmark for other international and domestic brands seeking similar status. It highlights the growing importance of enforcing intellectual property rights across borders, especially for globally renowned trademarks that carry significant consumer goodwill.

TRADEMARK RECOGNITION IN INDIA

The Trade Marks Act, 1999, protects well-known trademarks through several important sections. Section 2(1)(zg) defines well-known trademarks, while Section 11(2) provides protection across all goods and services, Section 11(6) sets criteria for identifying well-known marks based on public recognition and use, Section 11(8) ensures protection once a mark is recognized as well-known, and Section 11(9) states that registration or use in India is not mandatory. Sections 11(10), 29(4), and 29(9) prevent misuse and infringement, safeguarding the trademark’s reputation and preventing unauthorized use.

FAMOUS TRADEMARKS LIST

India has officially recognized 117 well-known trademarks, as of February 2025, which include several domestic and international names. Some prominent, well-known trademarks in India are:

• Bisleri: Originally an Italian soda brand, Bisleri became a household name in India for bottled mineral water. Its success story includes the launch of popular beverages like Thumbs Up, Mazaa, and Gold Spot, later sold to the Coca-Cola group, reflecting the brand’s widespread recognition and appeal.
• Infosys: The second-largest Indian IT company by revenue, Infosys is a trusted global brand in business consulting, IT, and outsourcing. Founded by Narayan Murthy, it overcame early challenges to become a benchmark in the IT services industry and a well-known trademark in India.
• Nirma: Launched in the 1960s by Dr. Karsanbhai Patel, Nirma revolutionized the household detergent market with its affordable pricing. By the 1980s, it dominated the sector, boosted by its iconic advertising slogan, “Doodh si Safedi, Nirma Se Aaay.

For a detailed list, refer to the official government document: List_of_Well-Known_Trade_Marks_as_of_10.02.2025.pdf

TRADEMARK STATUS BENEFITS

In India, to date, there are 117 trademarks registered as well-known trademarks, including Cartier, Whirlpool, and Kit Kat. This leads to the question: Is it essential for businesses targeting the Indian market to register their trademark as a well-known trademark?

To answer the question, it is imperative to get a holistic understanding of the benefits enjoyed by well-known trademarks under the Act.

Firstly, under Section 11(2), a relative ground for refusal of a trademark vis-à-vis well-known trademarks is incorporated – it provides that a trademark that is:

• (a) Identical or similar to an earlier trademark, and;
• (b) Is to be registered for goods or services that are dissimilar to those for which the earlier trademark was registered,

shall not be registered if the earlier trademark enjoys a well-known trademark status in India, and if the usage of the later trademark without a justifiable reason would harm the distinctive character or repute acquired by the earlier well-known trademark.

Secondly, under Section 11(10), the Registrar, while evaluating an application for registration of a trademark and any opposition thereto, is obligated to protect well-known trademarks from trademarks that are either identical or similar, and must take into consideration the mala fide intent of the applicant or the opponent affecting the rights related to the trademark.

Therefore, owing to the high level of protection provided to well-known trademarks under Section 11(2) and Section 11(10), it is advised for businesses targeting the Indian market to register their trademark as a well-known trademark.

TMWala can help streamline this process by assisting in compiling the required documentation, submitting formal applications, and representing clients before the Trademark Registry or courts.

CONCLUSION

The recognition of Nutella’s well-known trademark by the Delhi High Court sets a strong precedent for the enforcement of intellectual property rights in India. It not only strengthens Nutella brand protection but also highlights the evolving judicial approach towards safeguarding global brands against infringement and dilution.

This important development in Ferrero trademark news reaffirms the significance of obtaining trademark recognition in India, particularly for businesses operating across borders. With Nutella now part of India’s famous trademarks list, it joins an exclusive group of brands that enjoy enhanced legal safeguards.

Given the wide-ranging trademark status benefits provided under the Trade Marks Act, 1999, including cross-category protection and strong grounds for enforcement, businesses are strongly encouraged to pursue well-known trademark status to secure their brand equity in the Indian market.

TMWala, with its professional IP services, is here to support businesses in securing and protecting their trademarks effectively in India.