Ferrero Spa & Anr. Vs.shri Maa Distribution (India) Pvt. Ltd. & Anr - Court Judgment

SooperKanoon Citationsooperkanoon.com/1206177
CourtDelhi High Court
Decided OnMay-23-2017
AppellantFerrero Spa & Anr.
RespondentShri Maa Distribution (India) Pvt. Ltd. & Anr
Excerpt:
$~ * % + 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 cs (os) 1763/2010 page 1 of 6 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 cs (os) 1763/2010 page 2 of 6 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. cs (os) 1763/2010 page 3 of 6 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.pwto 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 cs (os) 1763/2010 page 4 of 6 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 cs (os) 1763/2010 page 5 of 6 the plaintiff. decree sheet be drawn. file be consigned to record room. may, 23, 2017 indermeet kaur, j cs (os) 1763/2010 page 6 of 6
Judgment:

$~ * % + 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 CS (OS) 1763/2010 Page 1 of 6 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 CS (OS) 1763/2010 Page 2 of 6 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. CS (OS) 1763/2010 Page 3 of 6 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.PW
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 CS (OS) 1763/2010 Page 4 of 6 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 CS (OS) 1763/2010 Page 5 of 6 the plaintiff. Decree sheet be drawn. File be consigned to record room. MAY, 23, 2017 INDERMEET KAUR, J CS (OS) 1763/2010 Page 6 of 6