The Ferrero Rocher Claim
Earlier this week, Italian confectionery giants Ferrero won a trademark lawsuit at the Delhi High Court. The case, docketed under Ferrero v. Devangan, prohibits the Defendants from using product packaging distinctive to the Claimant’s ‘FERRERO ROCHER’ chocolates. The Court also finds for the Claimants on costs, and authorises recovery from the Defendants on the basis of a bill of costs to be cross-certified by the Claimant’s lawyers. (The bill of costs method is one of several employed by the Delhi High Court in recent months, a point I’ve made in a previous story, in reference to a Tata Sons claim.)
Ferrero before the Delhi High Court
By my reckoning, this is the latest case to proceed to judgment out of a set of fifteen trademark lawsuits filed by Ferrero at the Delhi High Court since September 2010. It is a series of lawsuits that encompasses two claims that were significant for their time —a February 2012 claim in Ferrero v. Baid that earned Ferrero a decree and Rs. 500,000 in damages in March 2014, and a March 2012 claim in Ferrero v. Dugar, which yielded a staggering Rs. 1,000,000 damages payout in July 2013. (Both awards were, like this latest Ferrero judgment, against Defendants set ex parte.)
Six further suits —April 2011’s Ferrero v. Jain, May 2011’s Ferrero v. Jatin, May 2012’s Ferrero v. Shrivastava, September 2012’s Ferrero v. Gureja, December 2014’s Ferrero v. Agarwal, and May 2016’s Ferrero v. Jain — all produced pro-Claimant settlements between January 2013 and January 2017.
A further four Ferrero suits of similar vintage remain on the Delhi High Court docket. However, all of these are controlled by Ferrero through powerful interim injunction orders, and may safely be classified as nearing their endgame.
Ferrero v. Ruchi International, a case similar on facts to the latest Ferrero Rocher claim, carries a trade dress injunction against the Defendants since March 2014.
Ferrero v. Chowrani saw interim orders in September 2014 against Defendants for selling mints under the name ‘TIP TOP’ as against the Claimant’s ‘TIC TAC’. Ferrero v. Siddiq, also instituted to protect Ferrero’s ‘TIC TAC’ trademark, currently operates under a Claimant-friendly status quo going back to July 2015, over the Defendants’ lozenges under the name ‘TIT BITS’. Ferrero v. Upaasana has been advantage Ferrero since they secured an interim injunction in June 2016 against, wait for it, a Malayalam language movie for having a title deceptively similar to the Claimant’s ‘KINDER JOY’ product.
Ferrero v. Makhija, on the other hand, took another Ferrero claim to final judgment in August 2017. (It closely mirrors Ferrero’s Patient Zero claim before the Delhi High Court —2010’s Ferrero v. Shri Maa Distribution India — which proceeded to judgment in favour of Ferrero in May 2017.) This is a case of interest because it employed the template of a pseudo-settlement for recording a well-known trademark finding under Section 11(6) the Trade Marks Act. Well-known trademark findings of this nature (which I’ve examined at length before) aren’t unknown to the Delhi High Court, of course. Yet, this is the first notable instance in quite some time of a well-known trademark finding being entered into judgment upon the Defendant’s admission. This is a bizarre overreach, especially considering that the exhaustive framework afforded to statutorily recognize trademarks as well-known takes into account evidence from across the trade spectrum except for Defendants.
The Ferrero Rocher Decision
All of which offers reason to safely say two things about the latest Ferrero decision. One, that Mr Justice Nath’s terse judgment is far from objectionable when set against the fairly liberal limits drawn around Ferrero’s trademark rights by the Delhi High Court in recent years. Two, returning to Ferrero v. Makhija and Ferrero v. Baid (the latter is cited at length here), the ambiguity in recognizing ‘FERRERO ROCHER’ as a well-known trademark is also pretty much par for the course.
However, even conceding these as deadlocks, there is no material discussed to justify the trite conclusion that Mr Justice Nath thinks it “quite clear” that the Defendants are in breach of Ferrero’s rights in the ‘FERRERO ROCHER’ product packaging/trade dress. It is a point of some consequence since there is no case to be answered on on trademark or trade name violation per se (‘FERRERO ROCHER’ versus ‘D-LIZIE’).
It is also a point that gains significance if the operative part of Mr Justice Nath’s judgment is parsed carefully. The judge says that he seeks to protect Ferrero’s trademark rights “with respect to the said products and trade dress”. Surely, even if it is “quite clear” that the Claimant’s trade dress merits protection against a counterfeit, there ought to be something further — by way of a comparative or other evidence — to extend the protection to the trademark-protected products more generally? If not, why mention the terms ‘products’ and ‘trade dress’ as distinct at all?
Thus lie the difficulties with Ferrero’s latest trademark victory in Delhi. To be sure, they aren’t earth-shattering difficulties by any means. However, it is also clear that this is a Claimant that holds an 11–0 record before this forum over the last four years, a score which will likely improve towards the sharp end of 15–0 before the year is out. A record like that should invite closer investigation — not just for how these cases are being won but also for how big these victories really are.
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