India: Ferrero Rocher granted permanent injunction against D-Lizie for trade dress infringement

The Hon’ble Delhi High Court in Ferrero Rocher SPA & Anr. v. Piyush Devangan & Anr.[1], vide judgement dated January 22, 2018 granted an ex-parte permanent injunction and decreed the suit in favour of Ferrero Rocher for infringement of its trade dress. Allegedly, the Defendants were manufacturing and selling look a likes of the Plaintiff’s Ferrero Rocher chocolate specialties under the mark/name ‘D-Lizie’ and/or any other goods under the trade dress which is deceptively similar to that of the Plaintiff.

Contentions of Plaintiff:

The Plaintiff, through its counsel, contended that the Defendants were infringing its registered trade mark and its trade dress and made the following submissions:

• That Plaintiff’s chocolates are sold under the trade mark ‘FERRERO ROCHER’ at worldwide level and are amongst the best known confectionary products in the world.
• That the consumers and trade alike identify and recognize the products of the Plaintiffs from a distance owing to the distinct packaging style of ‘Ferrero Rocher’ having the following unique elements:

a)      Rounded crushed sold wrappers;

b)      A white sticker on individual products;

c)      Each resting in a fluted brown coloured cupcake shaved holder;

d)     Uniquely packaged individual chocolates packed in transparent boxes which clearly show the contents of the box without opening it;

e)      Bearing a white label on the lid with the image of the chocolates;

f)       Unique shape and packaging of the transparent box with round edges

• That the Plaintiff’s trademark and trade dress are well known and have been used for several decades and have become a characteristic part of identification of Ferrero Rocher chocolate specialties.

A comparison chart of the rival packaging/trade dress is reproduced herein below:

Plaintiff’s Products	Defendant’s Product
	Source: https://www.justdial.com/photos/dewsin-enterprises-indira-nagar-1st-stage-bangalore-food-product-manufacturers-2aenl61-pc-7254133-sco-156d98mg

Decision of Court:

The Court, agreeing with the averments made in the plaint and the evidence led by the Plaintiff, held that the Defendants were infringing the statutory and common law rights of the Plaintiff with respect to the said product packaging and the trade dress and accordingly decree was passed in favour of the Plaintiff and against the Defendants, thereby restraining the Defendants from dealing in any manner with the confectionary products which are look a likes of the Plaintiff’s ‘Ferrero Rocher’ under its trade dress. The Plaintiff was also entitled to cost as per bill of cost filed by the Plaintiff.

Concluding Remarks:

Ferrero Rocher in order to protect its rights over its mark and trade dress, took to court, the Defendants Piyush Devangan & Anr, for infringement of not only its trademark registration but also trade dress of the Plaintiff. The court passed an ex-parte order in favour of the Plaintiff. On comparison of the impugned products, the court was of clear opinion that the Defendant was in fact infringing the trademark and dressed the suit of “Ferrero Rocher” by selling its product “D-Lizie”.

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[1] CS(OS) 872 of 2014