The Delhi High Court, in its recent judgement, dated April 2018, has held that the selling of chocolates under the name of ‘GOLDEN PASSION’ amounts to passing off and unfair competition towards FERRERO and has further declared that the “FERRERO ROCHER trademarks and trade dress” are well-known trademarks within the meaning of the Trademarks Act (1999).

As a consequence, the Delhi High Court has restrained the opponent permanently from the infringement and ordered the infringer / defendant to pay punitive damages to Ferrero.

The facts leading to the dispute are the following:.

The plaintiff No.1 (FERRERO SpA, Italy) was founded in 1946 and is part of the Ferrero Group. It is ranked amongst the 4 biggest confectionery producers worldwide and employs approximately 22,000 people as of the year 2012 and is one of the most reputable companies in the world, according to the Reputation Institute Survey of 2009, as reported in the Economist and Forbes Magazines. The plaintiffs conduct their business in India officially through the plaintiff No.2, (Ferrero India Private Limited), incorporated in the year 2008. However, the plaintiffs’ products had entered into the Indian market long before the incorporation of the Indian subsidiary of the Ferrero Group;

The plaintiffs’ FERRERO ROCHER products have been available in India for a considerable length of time and they enjoy a formidable consumer base, who swear by the chocolates uniqueness of taste as well as their distinct visual appeal.

The defendant No.1 was an importer and marketer of chocolates under the brand-name Golden Passion in India, which produces look-alikes of the plaintiffs’ chocolates sold under the  name FERRERO ROCHER. Golden Passions’ chocolates are manufactured in China by defendant No.2, which is the entity manufacturing and exporting chocolates under the brand Golden Passion to India.

 

The plaintiffs have secured numerous trademark registrations all over the word, including India, including “FERRERO ROCHER”. The plaintiffs have been extremely vigilant as regards to protecting and enforcing the sole and exclusive rights that they enjoy in the FERRERO ROCHER trademarks and trade-dress as a result of which judicial forums all across the world, including India. have recognized and enforced such rights on numerous occasions against several third party entities.

 

The Court, in its reasoning, has declared that FERRERO ROCHER is a well-known mark by virtue of various factors such as use of its trade mark and trade dress since as long back as 1982 and its subsequent registration, its wide-spread business across numerous countries, the immense goodwill and reputation acquired by it around the world.

 

As per the pleadings of the Plaintiff, shape and other characteristic features of the packaging of the Plaintiff s‟ FERRERO ROCHER chocolate specialties, which constitute its trade-dress are entitled to protection as being well-known marks as they satisfy the criteria mentioned in section 11 (6) of the Trade Marks Act, 1999.

 

The chocolate products sold by the defendants, together with the packaging, are identical to FERRERO ROCHER’s.

 

Therefore, the misuse by the defendants creates a mistaken impression in the minds of consumers that:

  1. the defendants are permitted and authorized users of the Plaintiffs’ trademark; and
  2. there is a nexus between the defendants and the plaintiffs.

As a consequence, the Delhi High Court vide order dated 26.03.2014 had restrained the defendants from

  1. manufacturing, selling, offering for sale, advertising, directly or indirectly, dealing in any manner with the impugned Golden Chocolate product or any other product leading to infringement of the plaintiffs’ trademarks and trade-dress;
  2. ii) using the trade-dress, packaging, colour combination, layout, get-up designed to imitate the plaintiffs’ FERRERO ROCHER trademark and trade-dress leading to dilution of the plaintiffs’ trademark and trade-dress and unfair competition, namely, the plaintiffs business under the FERRERO ROCHER trademarks and trade-dress.

Moreover, in consideration that the plaintiff has also suffered immense loss to goodwill and reputation, they are hence entitled to a grant of damages not only in terms of compensatory damages but also in the form of punitive damages.

Under the given facts and circumstances of this case, the court ordered the defendants a decree for a sum of 10.00 Lac rupees in favour of the plaintiffs for  infringing the registered marks, trade dress and violating the interim order. Moreover, the Court ordered the defendants to pay an interest amounting to 10% pa (per annum) on the damages so awarded from the date of filing of the suit till the date of realization. Proportionate costs of the suit are also awarded to the plaintiffs and against the defendant.

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