Mr. Abhimanyu Prakash & Ors. v. Ferrero S.P.A & Ors.

High Court of Delhi at New Delhi, Division Bench | Date of Decision: January 6, 2026 Case Number: RFA(OS)(COMM) 1/2026 & CM APPL. 331/2026 Bench: Hon’ble Mr. Justice C. Hari Shankar (author) and Hon’ble Mr. Justice Om Prakash Shukla

BACKGROUND

This appeal challenges, to a limited extent, judgment dated 19 November 2025 and order dated 8 December 2025 passed by a learned Single Judge of the Delhi High Court in CS (Comm) 65/2023. The underlying suit was instituted by the respondents (Ferrero S.P.A. and others), registered proprietors of the NUTELLA trademarks including the distinctive NUTELLA glass jar shape mark, the word mark ‘NUTELLA’ and associated distinctive labels, registered across various territories and Classes seeking a permanent injunction restraining the appellants (Defendant Nos. 1 to 4 in the suit) from infringing these registered trademarks and passing off counterfeit goods under the identical mark, together with ancillary reliefs, damages and costs. Defendant Nos. 1 to 3 (the present appellants) were found to be manufacturers and sellers of empty glass jars in 180 ml, 350 ml and 650 ml sizes deceptively similar to the respondents’ NUTELLA jar, manufactured without authorisation from the respondents and offered for sale on their own website and, in the case of Defendant No. 4, also on third-party e-commerce platforms; Defendant Nos. 1 to 3 referred to these jars as “NUTELLA glass jars” on their own website, describing this as an industry-generic reference. The respondents’ products, under the proprietary NUTELLA trademarks and shape, have reportedly been available in India since 2009, sold in 180 ml, 350 ml and 750 ml sizes.

Upon institution of the suit, a Coordinate Bench of the Delhi High Court granted an ex-parte ad-interim injunction on 06.02.2023 (modified on 08.02.2023) restraining the appellants from dealing in the impugned NUTELLA glass jars and appointed three Local Commissioners to inventorize and seize infringing material at the appellants’ premises; this injunction was not contested and was confirmed/made absolute on 12.08.2025 by consent of the appellants. The learned Single Judge ultimately summarily decreed the suit under Order XIII-A of the Code of Civil Procedure, 1908. In the judgment dated 19 November 2025, the Single Judge held that Defendant Nos. 1 to 3 had filed no evidence substantiating their plea that empty glass jars are generically referred to as “Nutella jars” in the manufacturing industry or that their manufacture was bona fide and without knowledge of the respondents’ proprietary rights; given the scale of their operations, their own website description of the jars as “NUTELLA jars,” and the considerable market presence of the respondents’ products in India since 2009, the Single Judge rejected the “innocent first-time infringer” defence and instead held Defendant Nos. 1 to 3 to be “first-time knowing infringers” (applying the framework from Koninlijke Philips and Ors. v. Amazestore and Ors., 2019 SCC OnLine Del 8198). The Single Judge declined to draw an adverse inference connecting the appellants to counterfeit finished-product sales in other suits (CS(COMM) 43/2021 and CS(COMM) 917/2022) merely on the basis of a shared embossing mark, for want of further evidence and rejected the respondents’ claim for damages of ₹53.3 crores (based on an imputed finished-product value of ₹533.10 crores) as untenable and unpleaded. Instead, in view of the consent decree of permanent injunction and the absence of any other known infringement by the appellants, the Single Judge directed permanent injunction, partial legal costs to the respondents and critically for this appeal directed Defendant Nos. 1 to 3 to hand over the 3,05,916 seized jars (from one location) and 09 seized jars (from another location), valued by the respondents at ₹62.84 lakhs, to the respondents within two weeks, for the respondents’ own use, including potentially filling them with the respondents’ products for donation to NGOs as a CSR initiative; other seized packaging material was directed to be destroyed in the presence of the appellants’ representative.

The appellants filed IA 30639/2025 seeking modification of the judgment, objecting specifically to the direction handing the seized jars over to the respondents (rather than, for instance, permitting the appellants to repurpose them for packaging honey, jams, pickles, etc.), while expressly not objecting to the costs direction. By order dated 8 December 2025, the Single Judge dismissed this application, declining to modify the earlier judgment. The appellants filed the present appeal against both the judgment dated 19 November 2025 and the order dated 8 December 2025, but as clarified in the course of the appeal only to the limited extent of challenging the direction for release of the seized jars to the respondents, not the findings of infringement, the injunction or the costs.

ISSUES FOR DETERMINATION

1. Whether the judgment dated 19 November 2025 contains a positive finding that the seized jars were infringing jars or whether, as contended by the appellants (relying on paragraphs 33 and 34 of that judgment), the Single Judge had in fact found the appellants not to be infringers with respect to those jars.
2. Whether, given the appellants’ limited challenge before the Single Judge in IA 30639/2025 (objecting only to the release direction and not to the finding of infringement itself), the finding of infringement had attained finality and was open to further contest in the present appeal.
3. Whether, assuming the jars were correctly held to be infringing goods, the direction that they be handed over to the respondents for the respondents’ own use (including potential repurposing and CSR donation) was consistent with the relief contemplated under Section 28(1) read with Section 135(1) of the Trade Marks Act, 1999 or whether such goods could only be directed to be handed over for the purpose of destruction.

KEY HOLDINGS OF THE COURT

1. On whether the judgment contained a finding of infringement regarding the seized jars, the Court rejected the appellants’ contention, holding that the paragraphs of the judgment dated 19 November 2025 extracted in the present judgment (paragraphs 15-18 and 30-37 of the Single Judge’s judgment) not only held that the jars were infringing but also treated the appellants as “knowing infringers.” The Court held that paragraphs 33 and 34 (declining to draw an adverse inference connecting the appellants to counterfeit finished-product sales via the embossing mark and rejecting the disproportionate damages claim) did not amount to a finding that the appellants were not infringers of the jar shape mark itself a distinct point from the finding, elsewhere in the same judgment, that the jars themselves were infringing reproductions of the registered shape mark.
2. On finality of the infringement finding, the Court held that this finding was not open to further contest in the present appeal, because the appellants had themselves, in IA 30639/2025 before the Single Judge, expressly confined their challenge to the direction for release of the seized jars, without disputing the underlying finding of infringement or the grant of injunction. The Court held that the findings in the judgment dated 19 November 2025 had, in these circumstances, attained finality insofar as the infringement finding was concerned.
3. On the disposal of the seized jars, the Court held that once the jars were held to be infringing goods, the consequence flowing from Section 28(1) read with Section 135(1) of the Trade Marks Act, 1999 was “inexorable.” Section 28(1) confers on a registered proprietor two rights: the exclusive right to use the registered trademark for the goods/services for which it is registered and the right to obtain relief against infringement as provided under the Act; Section 135(1) includes, among available reliefs for infringement, delivery up of infringing goods to the plaintiff for the purpose of erasure or destruction. The Court noted that the respondents had specifically prayed, in prayer (vii) of the plaint, for delivery up of the infringing goods for destruction. On this basis, the Court held that there was no merit in the appellants’ challenge to the direction that the seized jars be released to the respondents.
4. However, the Court held that, given the specific statutory mandate of Section 135(1) (which contemplates delivery up “for the purposes of erasure or destruction”), the Single Judge’s direction which had permitted the respondents to use the jars for their own purposes, including potentially filling them with product for retail sale or CSR donation went beyond what the statute contemplated. The Court held that the jars could only properly have been directed to be handed over to the respondents for the purpose of destruction, not for any other productive or commercial use.
5. The Court recorded the respondents’ counsel’s undertaking that, if the jars were released to the respondents, they would be destroyed in accordance with Section 135(1) of the Trade Marks Act and not put to any commercial purpose.
6. Final operative order: The Court modified the impugned orders to the limited extent that the seized jars, upon release to the respondents, would be destroyed by the respondents and not put to any other use, whether commercial or otherwise (departing from the Single Judge’s direction permitting the respondents to repurpose the jars for their own products or CSR donation). The appellants were granted the right to have a representative present at the destruction, which was directed to take place on 17 January 2026 at 11 a.m. The appeal was disposed of in these terms.

STATUTORY PROVISIONS INVOLVED

Section 28(1) of the Trade Marks Act, 1999 (reproduced in relevant part in the judgment), grants a registered proprietor two rights: the exclusive right to use the registered trademark in relation to the goods or services for which it is registered and the right to obtain relief for infringement as provided under the Act. The Court applied this provision as the source of the respondents’ underlying entitlement, once infringement was established, to seek the statutory reliefs available under the Act, including in respect of the seized infringing jars.

Section 135(1) of the Trade Marks Act, 1999 (reproduced in relevant part in the judgment), sets out the reliefs available in suits for infringement or passing off, including injunction, damages or account of profits, together with or without an order for delivery up of the infringing goods for the purpose of erasure or destruction. This provision was central to the Court’s modification of the Single Judge’s order: while the Court agreed that release of the infringing jars to the respondents was justified under this provision, it held that the statute specifically contemplates delivery up “for the purposes of erasure or destruction” and does not extend to permitting the plaintiff to repurpose or commercially exploit the delivered-up infringing goods.

REASONING OF THE COURT

The Court’s reasoning on the threshold question whether the Single Judge had actually found the jars to be infringing proceeded by close textual reference to the specific paragraphs of the judgment dated 19 November 2025 reproduced in the present appellate judgment, distinguishing between the Single Judge’s rejection of a broader, unproven allegation (that the appellants were complicit in selling counterfeit finished NUTELLA products through a shared embossing mark with defendants in other suits) and the Single Judge’s clear, separate and unqualified finding that the empty glass jars themselves as manufactured and sold by the appellants infringed the respondents’ registered shape mark, with the appellants further found to be “knowing” (not merely innocent first-time) infringers given their sophisticated commercial operations and their own explicit reference to the jars as “NUTELLA jars.” The Court thus read the two sets of findings (rejection of the finished-counterfeit-goods allegation and affirmation of the jar-shape infringement) as addressing entirely distinct factual questions, with only the latter being relevant to the disposal of the seized jars and held that the appellants’ reliance on paragraphs 33-34 to suggest a general finding of non-infringement was a mischaracterization.

On finality, the Court’s reasoning was procedural and equitable: having elected, in their own application before the Single Judge, to challenge only the release direction while accepting (or at least not challenging) both the injunction and the underlying infringement finding, the appellants could not be permitted to reopen the infringement question for the first time in the present appeal a straightforward application of the principle that an appellant is bound by the scope of the challenge it chose to advance below.

On the substantive question of the jars’ disposal, the Court’s reasoning was closely textual, turning on the specific statutory language of Section 135(1), which the Court read as authorizing delivery up of infringing goods only for “erasure or destruction” not for any other beneficial use by the plaintiff, however well-intentioned (such as the CSR-donation option contemplated by the Single Judge). The Court reasoned that permitting the respondents to use the jars for their own retail products or even for charitable donation after filling with product, would exceed the scope of relief the statute contemplates for infringing goods, since the purpose of such delivery-up relief is remedial/preventive (removing infringing articles from circulation) rather than compensatory or restitutionary in a form that repurposes the infringing articles themselves for the successful plaintiff’s benefit. The Court accepted the respondents’ counsel’s undertaking to destroy the jars as resolving any concern about their being put to further use and accordingly narrowly tailored its modification to align the practical outcome (destruction, with the appellants’ representative present) with what it read as the correct statutory standard, while otherwise upholding the Single Judge’s core direction that the jars be handed over to the respondents (rather than returned to or retained by the appellants).

DOCTRINAL SIGNIFICANCE

Within the bounds of what was actually decided, this is a narrow, largely procedural appellate ruling arising from a summary judgment (under Order XIII-A CPC) in a trademark infringement suit, with the appeal itself confined by the appellants’ own prior election to a single discrete issue: the proper disposal of goods found to infringe a registered trademark. Its principal significance lies in the Division Bench’s clarification of the scope of relief available under Section 135(1) of the Trade Marks Act, 1999 in respect of delivery-up of infringing goods: the Court held that such delivery-up is statutorily confined to erasure or destruction and does not extend to authorizing the successful plaintiff to appropriate, repurpose or otherwise put the infringing goods to productive or commercial use even for a benign purpose such as CSR-driven donation to NGOs. This holding meaningfully narrows what might otherwise have been read as a broader remedial discretion (as reflected in the Single Judge’s original order, which contemplated the plaintiff using the jars for its own products or charitable purposes) and instead ties delivery-up relief strictly to the elimination of infringing articles from the market. The judgment also illustrates the “first-time knowing infringer” framework derived from Koninlijke Philips and Ors. v. Amazestore and Ors., as applied and upheld (without further scrutiny, given the limited scope of appeal) by the Single Judge below. Given the narrow compass of the appeal and its resolution primarily by way of undertaking (the respondents’ counsel’s agreement to destroy the jars) rather than extensive independent legal analysis, the decision’s broader precedential value is likely to be modest, confined chiefly to the Section 135(1) delivery-up/destruction point and to affirming that an appellant cannot expand the scope of appellate challenge beyond what was contested before the court below.