The Central Question
How should trademark law respond when the packaging of a product, by long, continuous and exclusive use, becomes a registered trademark and source identifier in itself, and is then commercially replicated, at scale, without authorisation?
In Ferrero v. Abhimanyu Prakash, the Delhi High Court answers this through a summary judgment dated 19 November 2025:
Shape and packaging trademarks are not ornamental extras. Once registered and used for decades, they are protected at the level of the container itself, and commercial replication at scale carries real legal and financial consequences.
Background: Ferrero’s Rights and the Discovery of Infringement
Ferrero, part of the Ferrero Group established in 1946, adopted the NUTELLA mark in 1964, along with the iconic wide-neck glass jar with white plastic cap.
Key rights and use:
- The Nutella jar shape itself is registered as a trademark in Class 30 without any word mark, under TM No. 1711197.
- Ferrero’s Nutella products, sold in jars of 180 ml, 350 ml and 750 ml, have been continuously and exclusively used for over 50 years; the trade dress and shape have acquired strong secondary significance.
In October 2022, Ferrero discovered that Defendants
- Defendant Nos. 1-3 manufactured and sold empty glass jars in 180 ml, 350 ml and 650 ml sizes which were deceptively similar to the Nutella jar shape, and offered them on their own website and on IndiaMart as “Nutella glass jars”.
Ferrero Spa & Ors. v. Abhimanyu… - Defendant No. 4 offered the same jars for sale on its own and third-party e-commerce platforms under the description “Nutella glass jar”.
The ad-interim injunctions (originally granted ex parte in February 2023) were made absolute with the defendants’ consent on 12 August 2025. These were ultimately incorporated into the final decree and summary judgment passed on 19 November 2025.
The counterfeit link alleged by Ferrero:
The jars seized in this suit bore the embossing code ‘E20 O A’, the same code seen on counterfeit Nutella products in Ferrero’s earlier suits. On Ferrero’s computation, extrapolating the monthly value of empty jars over approximately 29 months from October 2020, the turnover in empty jars was estimated at Rs.18.22 crore.
Ferrero’s Case
Ferrero’s case rested on four pillars.
1. Registered rights and iconic trade dress
- Ownership of registrations in the NUTELLA word mark, labels, distinctive trade dress and the Nutella jar shape itself.
2. Direct infringement and passing off:
- Defendant Nos. 1-3 manufactured near-identical jars and described them as “Nutella glass jars” in brochures and online listings; Defendant No. 4 sold them under the same description.
3. Knowledge and scale of operations
- Emails, drawings and a purchase order dated 27 July 2020 referred to the design as “Nutella cocoa jar”.
- An invoice of 21 October 2020 showed supply to a UAE buyer, indicating that the manufacturing business had run since at least October 2020.
- On Ferrero’s computation, if monthly value of jars is extrapolated over ~29 months, turnover in empty jars would be about ₹18.22 crore.
4. Link to counterfeit products (alleged)
- The jars seized in this suit bore the embossing “E20 O A”, the same code seen on counterfeit Nutella products in Ferrero’s earlier suits
On damages, Ferrero invoked Rule 20 of the Delhi High Court IPD Rules, 2022, seeking
- 10% profit on production-level value of jars (~₹1.82 crore on ₹18.22 crore), and
- 10% on the assumed value of finished counterfeit products (₹53.3 crore on ₹533.10 crore), plus
- Litigation costs of about ₹31.06 lakhs.
The Defendants’ Case
Defendant Nos. 1-3 did not contest the injunction but opposed damages and costs. Their core contentions were:
1. Job-work / generic glass business
- They described themselves as manufacturers and traders of generic glass jars and bottles, supplying on a job-work basis for a UAE food company (Al Ameera Foodstuff Ind. LLC).
- The jars were allegedly made to designs supplied by the customer.
2. No use of Nutella mark
- They claimed never to have embossed or used the NUTELLA word mark or logos on any jars; only the shape, which they portrayed as a common industry design.
3. “Nutella jar” as colloquial description
- The defendants suggested that “Nutella jar” is an industry shorthand for a popular, generic wide-neck jar shape, and not perceived as proprietary.
4. No link to counterfeiters
- They denied involvement in manufacturing counterfeit Nutella products, emphasising that Ferrero had chosen not to sue the UAE customer which designed and ordered the jars.
5. Innocent first-time infringers
- Relying on Koninklijke Philips v. Amazestore and Aero Club v. Sahara Belts, they characterised themselves as first-time, innocent infringers who:
- accepted the injunction,
- did not drag the matter to trial, and therefore,
- should not face damages or costs.
Defendant No. 4 also did not contest the injunction and no damages were pressed against it.
Summary Judgment and Permanent Injunction
Relying on Su-Kam Power Systems Ltd. v. Kunwer Sachdev, the Court reiterated that in commercial suits, trial is no longer the default. Where a defendant has ‘no real prospect’ of defence, a summary judgment can be granted under Order XIII-A CPC.
The Court identified three factors that made this a fit case for summary judgment
- Plaintiffs’ registrations in the Nutella marks and jar shape were undisputed.
- Defendant Nos. 1-3 were found, through local commissions and their own documents, to be manufacturing and selling empty glass jars deceptively similar to the Nutella jar, marketed as “Nutella glass jars”.
- All defendants ultimately chose not to contest Ferrero’s proprietary rights and consented to a permanent injunction.
The suit was therefore decreed for permanent injunction. The ex parte injunction orders dated 6 and 8 February 2023, made absolute on 12 August 2025, merged into the final decree.
What the Court expressly left open:
The plaintiffs’ prayer to have NUTELLA declared a well-known mark was expressly left open by the Court and was not adjudicated in this judgment. That determination was preserved for appropriate proceedings at a later stage.
Damages and Costs: What the Court Accepted and Rejected
| Claim | Amount Sought | Court’s Decision |
| 10% profit on production-level value of empty jars (Rs.18.22 crore estimated turnover) | Rs.1.82 crore | Not awarded as a damages figure. Accounted for in the broader balancing exercise, with the Court noting the absence of earlier proceedings and the defendants’ consent to injunction. |
| 10% profit on finished counterfeit Nutella product value (Rs.533.10 crore assumed market value) | Rs.53.3 crore | Rejected outright. No pleading or evidence linked Defendants 1-3 to sale of finished counterfeit products. Common embossing code alone insufficient. Claim appeared only in written note, not in pleadings. |
| Litigation costs | Rs.31.06 lakhs | Not awarded in full. Partial costs of Rs.10 lakhs awarded as a balanced outcome. |
| Delivery up of seized jars | 3,05,925 jars | Ordered. Defendants to deliver up all seized jars to Ferrero within two weeks. Ferrero may use them as it sees fit, including for CSR initiatives. |
| Destruction of other seized packaging material | All other seized material | Ordered destroyed in the presence of Ferrero’s representative within four weeks. |
‘Knowing’ Not ‘Innocent’: The Critical Distinction
The most significant aspect of the damages analysis was the Court’s rejection of the innocent infringer defence. The Court carefully distinguished innocent from knowing conduct, applying the framework from Koninklijke Philips.
- Documents filed by Defendant Nos. 1-3 (email dated 27 July 2020, drawings, and invoice of 21 October 2020) showed that the order and design were clearly described as for a ‘Nutella cocoa jar’, making them aware that they were copying Ferrero’s jar.
- There was no evidence that ‘Nutella jar’ was a generic industry term. No material was produced to support that assertion.
- Nutella products had been available in India since 2009. Given that market presence, the claim of ignorance of the shape mark was not persuasive.
- References to ‘Nutella jars’ on the defendants’ own website reflected an attempt to ride on the goodwill in Ferrero’s registered shape mark.
On this basis, the Court characterised Defendant Nos. 1-3 as first-time knowing infringers rather than innocent ones. This distinction mattered for the damages analysis, though the Court ultimately balanced deterrence with the absence of prior proceedings and the defendants’ eventual consent, resulting in partial costs of Rs.10 lakhs rather than full turnover-based damages.
Key Takeaways
1. Registered shape marks and packaging are fully enforceable: The Nutella jar, as a registered shape mark, is enforceable per se. Manufacturing and selling empty jars that are deceptively similar, and marketing them as “Nutella glass jars”, was sufficient to attract summary judgment for infringement—even without any finished counterfeit Nutella product being sold by these defendants.
2. Summary judgment is a live tool in commercial IP disputes: Where registrations are undisputed, infringement is evidenced by seizures and the defendants ultimately do not contest rights, the Court is prepared to dispense with trial and grant summary judgment on both injunction and damages under Order XIII-A CPC.
3. “Innocent job work” has a high evidentiary threshold: Assertions of being mere job-workers or generic manufacturers must be substantiated. In the absence of evidence showing the shape is generic or “Nutella jar” is an industry term, and where internal documents clearly identify the design as Nutella, courts are unlikely to accept an “innocent infringer” defence.
4. Speculative, downstream counterfeit damages will not pass: High claims based on assumptions about counterfeit products in the market, without specific pleadings or evidence linking the defendant to those products, are unlikely to be accepted. The Court firmly rejected a ₹53.3 crore finished-product-level claim as speculative and unpleaded.
Conclusion
Ferrero v. Abhimanyu Prakash is a clear statement of the law on shape and packaging trademarks in India. The Nutella jar is not protected because of its label or word mark. It is protected because the shape itself is a registered trademark, earned through decades of continuous and exclusive use that has given it strong secondary significance as a source identifier. Manufacturing and selling empty versions of that jar at scale, and describing them by the trademark owner’s name, is infringement.
For brand owners, the decision confirms that shape and trade dress registrations are worth pursuing and maintaining. For manufacturers operating in the glass, packaging, or container industry, it is a firm reminder that copying the shape of an iconic branded product, even without using the word mark, carries real legal and financial consequences.
Governing Law
Trade Marks Act, 1999: Section 29, Section 31, Section 34 | Code of Civil Procedure, 1908: Order XIII-A | Delhi High Court IPD Rules, 2022: Rule 20
