A Jar, a Shape, and a Trademark: The Delhi High Court’s Nutella Decision

Can the copycat say that the object, after all, is just an ordinary glass jar capable of being used for honey, jam or pickles? The Delhi High Court dealt with precisely this unusual question in Mr. Abhimanyu Prakash & Ors. v. Ferrero S.P.A. & Ors.¹ The disputes concerned thousands of empty glass jars manufactured and sold by the appellants that were found to be deceptively similar to Ferrero’s Nutella jars.

The dispute arose when Ferrero S.P.A. and its group entities approached the Delhi High Court alleging infringement of their registered trademark rights in the distinctive Nutella glass jar. The defendants were engaged in manufacturing and selling empty glass jars which Ferrero alleged were deceptively similar to its Nutella jars. On 6th February, 2023, the Court granted an ex-parte ad-interim injunction and appointed Local Commissioners to seize the infringing material. During the execution of the commission, 3,05,916 jars were seized from the defendant’s premises, along with nine additional jars from another location. The defendants subsequently consented to the injunction being made absolute on 12th August 2025. The injunction was subsequently confirmed on 12 August 2025, with the defendants consenting to its confirmation.

The Single Judge’s Decree and the Fate Of Three Lakh jars

The learned Single Judge decreed the suit under the Order XIII-A of the CPC,² rejecting the defendant’s contention that they were innocent, first-time infringers. The defendants failed to substantiate their claim that such empty glass jars were commonly referred to as “Nutella Jars” in the manufacturing industry or they had manufactured them without knowledge of Ferrero’s proprietary rights. The Court also relied on the defendants own website, where the jars were described as “NUTELLA glass jars” indicating their awareness of Ferrero’s goodwill and registered shape mark. Accordingly, Defendants Nos. 1 to 3 were characterised as “first time knowing infringers”. In reaching this conclusion, the Single Judge referred to Koninklijke Philips and Ors. v. Amazestore³ and Ors. However the Court declined to draw any adverse inference linking them to counterfeit finished NUTELLA products merely because the embossing “E20 OA” was also found on counterfeit products in two other proceedings, in the absence of further evidence establishing such a connection. Ferrero claimed Rs. 53.3 crore in damages based on an alleged Rs. 533.10 crore value of finished counterfeit NUTELLA products. The single Judge rejected the claim for lack of evidence linking the defendants to those of finished products. 

As regard to the seized jars, the single Judge recorded that their value had been assessed by Ferrero at Rs. 62.84 lakh and held that their handover to Ferrero would result in losses to Defendants Nos. 1 to 3 and act as a deterrent against them. Accordingly the Court directed the defendants to handover 3,05,916 jars seized from Location 18 and 9 jars seized from Location 29 to Ferrero within two weeks. Ferrero was permitted to use the jars for its own purposes, including potentially filling them with products for donation to NGOs as part of its Corporate Social Responsibility (CSR) initiatives. The remaining seized packaging material was directed to be destroyed.

The Appellants Challenge : An Infringing Jar or merely an Ordinary Container?

Aggrieved by the direction concerning the seized jars, the appellants approached the Division Bench. The challenge was narrower than a wholesale attack on the earlier decree. Before the Single Judge, they had sought modification through IA 30639/2025, particularly in relation to the direction releasing the seized jars to Ferrero.

Their principal submission before the Division Bench was that there was no positive finding that the seized jars themselves were infringing. Relying upon the Single Judge’s judgement, Mr. Samrat Nigam, learned Senior Counsel for the appellants, argued that the Court had actually declined to establish any connection between the appellants and counterfeit finished NUTELLA products. He contended that the jars were ordinary glass containers capable of using legitimate purposes, including packaging honey, jams and pickles. According to the appellants, their destruction would serve no public purpose when they commercially used unrelated products.

Ferrero, represented by Mr. Pravin Anand, took a different position. Ferrero maintained that the jars had already been judicially found to be infringing and undertook that if released to it, the jars would be destroyed in accordance with Section 135(1) of the Trade Marks Act, 1999⁴ and would not be used for any commercial purpose.

Finality Changes The Battlefield

The Division Bench comprising Justice C. Hari Shankar and Justice Om Prakash Shukla rejected the appellants attempt to reopen the finding that the seized jars were infringing. The Court observed that the relevant paragraphs of the Single Judge’s judgement did not merely establish infringement but also characterised the appellants as knowing infringers. More importantly, the Division Bench noted that when the appellants moved IA 30639/2025, their challenge was confined to the direction concerning release of the seized jars. They had not sought to reopen the findings contained in the judgment dated 19 November 2025. Consequently, those findings had attained finality.

This procedural history became decisive. Once the finding of infringement had attained finality, the appellate proceedings could not be converted into an opportunity to contest the underlying infringement afresh. 

Section 28 and 135: The Statutory Route To Destruction

The Bench then turns up to Sections 28(1) and 135(1) of the Trade Marks Act, 1999. Under Section 28(1) of the Trade Marks Act 1999,⁵ registration gives the proprietor the exclusive right to use registered marks and seek relief against the infringement. The Court applied this principle to Ferrero’s registered NUTELLA rights.

The Court relied on Section 135(1) of the Trade Marks Act 1999, which permits infringing goods to be delivered to the proprietor for destruction or erasure. The Bench held that once the jars had been found to be infringing, the consequence flowing from Sections 28(1) and 135(1) was clear. The registered proprietor’s statutory right to obtain relief against infringement included delivery-up of infringing goods for destruction. At the same time, the Court carefully confined the relief to what the statute contemplated that the jars could be handed over to Ferrero for destruction, and not for any other use, commercial or otherwise.

Conclusion 

The decision clarifies that once the goods are conclusively found to be infringing their ability to be used to other legitimate products does not allow the infringer to retain or repurpose them. The finding of the infringement brings the goods within statutory remedies available to the registered proprietor.

Most Importantly, the Division Bench placed an important limit on the relief. Ferrero could receive the seized jars, but only for destruction and not for commercial purpose or other use. The judgement therefore balances protection of trademark rights with the limits prescribed under Section 135 of the Trade Marks Act.

Citations

1. Mr. Abhimanyu Prakash & Ors. v. Ferrero S.P.A. & Ors. RFA(OS)(COMM) 1/2026 ↩︎
2. Code of Civil Procedure 1908, O. XIII-A. ↩︎
3. Koninklijke Philips and Ors. v. Amazestore 2019 SCC OnLine Del 8198 ↩︎
4. Trade Marks Act, 1999, s. 135(1) ↩︎
5. Trade Marks Act, 1999, s. 28(1) ↩︎

Expositor(s): Adv. Gaurangi Tandon