Ferrero SPA & Ors. v. Abhimanyu Prakash & Ors.
Decided on: 19th November, 2025
Coram: Manmeet Pritam Singh Arora, J.
Citation: CS(COMM) 65/2023, 2025:DHC:10308
Introduction
Most trademark disputes are fought over names, logos, or labels. This case is different. The Delhi High Court has handed down a judgment that expands the boundaries of trademark protection to its most elemental form: the shape of a container, standing entirely alone, without any word or logo. A jar. Just its silhouette. And the Court has held that this is enough.
In doing so, the Court has addressed a set of questions that are increasingly relevant in a world where counterfeiting operates through organised supply chains rather than lone actors. Can a manufacturer who only makes empty packaging, and never fills, labels, or sells the finished product, be held liable for trademark infringement? Can knowledge of a registered mark, established entirely through the infringer’s own documents, substitute for direct evidence of intent? And how should courts calibrate damages under the summary judgment procedure when the actual link between the upstream component and downstream counterfeiting cannot be conclusively proved?
The judgment in Ferrero SPA & Ors. v. Abhimanyu Prakash & Ors. answers all three questions. The answers matter not just for the confectionery industry, but for every rights holder whose brand identity is embodied in the physical form of its product.
Factual Background
Ferrero SPA, part of the world-renowned Ferrero Group, holds trademark registrations for the NUTELLA word mark and, critically, a standalone shape mark for the NUTELLA glass jar under Class 30 (TM No. 1711197). The registration covers the three-dimensional silhouette of the wide-neck glass jar with a white plastic cap, without any word, label, or colour. The jar’s shape, independent of everything else, is a registered trademark.
Defendant Nos. 1 to 3 are glass manufacturers based in Firozabad who manufactured and sold empty glass jars that were near-identical copies of the NUTELLA jar. Defendant No. 4 was an online seller who listed these jars on its own website and on third-party e-commerce platforms. Crucially, none of the Defendants ever made or sold Nutella, the spread. They only made the containers.
All Defendants referred to their product openly as ‘Nutella glass jars’ on their own websites and on IndiaMart. The Plaintiffs discovered this activity in October 2022. On 9th March 2023, Local Commissioners conducted inspections at three premises in Firozabad and seized a total of 3,05,916 empty jars, valued at approximately Rs. 62.84 lakhs. A particularly significant detail was that these jars bore the embossing ‘E20 O A’ at the base, the same embossing found on counterfeit Nutella products seized from downstream counterfeiters in two other suits: CS(COMM) 43/2021 and CS(COMM) 917/2022.
After failed mediation attempts, the Plaintiffs applied for a summary judgment. All Defendants eventually consented to a decree of permanent injunction. Their fight was solely on the quantum of damages and legal costs, where they argued they were merely first-time innocent infringers who had manufactured the jars on the basis of a design brief from a UAE customer, without any knowledge of Ferrero’s proprietary rights in the shape of the jar.
Analysis
The Court’s reasoning proceeds across three distinct and practically significant grounds.
The first concerns upstream supply chain liability. The Defendants made an argument that might seem intuitively compelling: they never made Nutella, never labelled a jar, never sold a finished product. They were simply contract manufacturers fulfilling a customer’s order. The Court rejected this framing. The Plaintiffs hold a registered shape mark in the jar itself. Manufacturing a near-identical copy of that shape, at scale, and offering it commercially under the name ‘Nutella glass jars’ constitutes infringement of the shape mark, regardless of whether the final product inside ever reaches a consumer. The judgment makes clear that trademark liability can attach to an upstream component manufacturer who knowingly facilitates downstream counterfeiting, even without direct involvement in the final infringing product.
The second and more granular issue is how the Court determined that the Defendants were knowing infringers rather than innocent ones. The Defendants cited Koninlijke Philips v. Amazestore and Aero Club v. Sahara Belts to argue that as innocent first-time infringers who had neither contested the injunction nor prolonged the proceedings, no monetary liability should be imposed. The Court turned the Defendants’ own documents against them. The purchase order email dated 27.07.2020, produced by the Defendants in their written statement, explicitly referred to the design as the ‘Nutella cocoa jar’, establishing that they knew precisely what they were manufacturing. The Defendants’ own websites listed the jars as ‘Nutella glass jars’, demonstrating active and conscious use of the Plaintiff’s shape mark and its goodwill. The Defendants had produced no evidence to support their claim that the jar shape was generically referred to as a ‘Nutella jar’ across the manufacturing industry. And given that NUTELLA products have been available in the Indian market since 2009, the Court found the submission of unawareness wholly unpersuasive. The conclusion: the Defendants were first-time knowing infringers, not innocent ones. This distinction had direct consequences for the relief granted.
The third issue concerns the proportionality of damages under the summary judgment procedure, and here the Court’s reasoning is equally instructive. Ferrero claimed damages of Rs. 53.3 crores, calculated on a speculative estimate of the value of finished counterfeit products that third parties might have sold using the Defendants’ empty jars. The Court firmly rejected this. There was no material on record to establish collusion between these Defendants and the downstream counterfeiters. There was no evidence of any sale of finished counterfeit products by the Defendants themselves. The damage estimates had not even been pleaded in the application, a procedural deficiency that independently undermined the claim. The Court also noted, not neutrally, that the Plaintiff had itself elected not to pursue the UAE entity that had placed the manufacturing order, which further weakened the causal chain. The relief was therefore confined to what was proportionate and grounded: handover of all 3,05,916 seized jars to the Plaintiffs, and partial legal costs of Rs. 10 lakhs.
Conclusion
The Court decreed permanent injunction against all Defendants. Defendant Nos. 1 to 3 were directed to hand over all 3,05,925 seized jars to the Plaintiff within two weeks, pay legal costs of Rs. 10 lakhs within four weeks (with interest at 12% per annum in the event of default), and destroy all other seized packaging material in the presence of a Plaintiff representative. In a notable aside, the Court suggested that if the Plaintiff did not wish to use the recovered jars commercially, it may consider donating them filled with products to NGOs as a CSR initiative.
Several lessons emerge from this judgment. First, the shape of a product container can constitute a standalone registered trademark, and its protection extends even to manufacturers of empty packaging who have no role in the final product. Second, knowledge is the dividing line between innocent and knowing infringement, and it can be established entirely from the infringer’s own records. Third, Indian courts applying the summary judgment procedure under Order XIII-A CPC are willing to calibrate damages with care, declining speculative or unpleaded damages claims even when infringement is established. And fourth, there is an implicit signal that rights holders who seek large damages must ensure their causal chain is tight, their pleadings complete, and that they have pursued all relevant parties.
For brand owners whose identity lives in the form of their product, this judgment is a meaningful step forward. For those operating in the supply chain of counterfeit goods, it is an equally meaningful warning.