Recently, the Delhi High Court in the case Ferrero Spa & Nr vs M/S Ruchi International & Anr [CS(COMM) 76/2018] has ruled in favor of the Ferrero Spa (hereinafter referred to as the ‘Plaintiffs’). A suit was filed for permanent injunction and related reliefs against the infringement of the Plaintiff’s product and trade dress of FERRERO ROCHER chocolate. Defendant no. 1, who was an importer and marketer of chocolates under the brand name ‘Golden Passion’ settled the matter amicably outside Court, however, Defendant no. 2, manufacturer of the chocolates under the mark Golden Passion in China, did not appear before the Court, and an ex parte interim order was passed against him. Despite service of the same, Defendant no. 2 had not ceased the sale of the impugned product. The Court found in favor of the Plaintiff and imposed costs and damages worth INR 10 Lakhs (USD 14989 approx.).
In the above case, the Plaintiff is a part of the Ferrero Group, founded in 1946. Being ranked amongst the 4 biggest confectionary producers worldwide, it is the most reputable company in the world, according to the Reputation Institute Survey of 2009, as reported in the Economist and Forbes Magazines. However, the Plaintiffs conduct their business in India officially through Ferrero India Private Limited (hereinafter referred to as Plaintiff No. 2), incorporated in the year 2008.
During the pendency of the suit, there was a settlement reached between the Plaintiff and the Defendant No. 1, an importer and marketer of chocolates under the brand-name Golden Passion in India which are also look-alikes of Plaintiff’s chocolates sold under the FERRERO ROCHER trademark. Vide the settlement, a compromise decree was passed vide order dated May 26, 2016. Whereas, none appeared on behalf of Defendant No. 2, which is the entity manufacturing and exporting chocolates under the brand Golden Passion to India, the suit proceeded being treated ex- parte against him.
Major Contentions by the Plaintiffs
- The Plaintiff’s mark FERRERO ROCHER has been declared as a well-known mark by the Delhi High Court vide order dated March 13, 2004 in CS (OS) 404/2012.
- Further, the Plaintiff’s contend that the label, 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 and the packaging in which they are sold are identical to that of the packaging of the Plaintiff’s FERRERO ROCHER chocolate specialties and the striking similarity between the Plaintiff’s FERRERO ROCHER chocolates and those of the Defendant’s has been enumerated in the plaint.
- Such misuse by the Defendants of the identical and/or deceptively similar trademarks, trade dress creates a mistaken impression in the minds of consumers that:
- the Defendants products/services emanate from the Plaintiff’s themselves;
- the Defendants are permitted and authorized users of the Plaintiff’s trademark; and
- there is a nexus between the Defendants and the Plaintiffs.
- 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 Plaintiff’s trademarks and trade-dress;
- using the trade-dress, packaging, color combination, layout, get-up designed to imitate the Plaintiffs’ FERRERO ROCHER trademark and trade-dress leading to dilution of the Plaintiff’s trademark and trade-dress and unfair competition vis-a-vis the Plaintiff’s business under the FERRERO ROCHER trademarks and trade-dress.
Contentions by the Defendants
The Defendants did not file any written statement in the suit. They also failed to admit or deny the documents of the Plaintiffs, and thus the Court proceeded to decide the case ex parte.
Observations by the Court
The Plaintiff has suffered immense loss to goodwill and reputation and hence, is entitled to a grant of damages not only in terms of compensatory damages but also in the form of punitive damages.
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