Analysis of Ferrero Rocher V. Ruchi International in Relation to Trademark Infringement

Trade dress refers to features and visual appearance of the product, which includes its shape, packaging, a combination of colours used, which are protected by way of registration by the owner against unauthorized persons from using the same. Though Trade dress is not clearly defined under Trademark Act 1999, however some of the clauses of Section 2 of Trademark Act 1999, defines its meaning. As per Section 2(1)(q) packaging includes any case, box, container, covering, and as per Section 2, (1)(m) mark includes label, brand, the shape of goods, packaging, and a combination of colours. Therefore, any unauthorized person may not use the trademark of a well-established brand directly but may use its trade dress to deceive the consumers. Thus, the Trademark Act, 1999 provides protection to trademark as well as trade dress of the product.

Brief Background of The Case

The plaintiff, in this case, is the famous company Ferrero Spa which is an Italian confectionery giant that is a part of Ferrero Group, founded in 1946. Its regarded as a prominent confectionary producer in the world and a well-known brand in the eyes of its consumers from across the globe. The plaintiff operates its business in India through its subsidiary Ferrero Private Ltd which was incorporated in India in the year 2008. The products of the company are famous among its consumers for their unique taste, and distinctive packaging which is quite attractive. In fact, its visual appearance is its unique selling proposition which lures its consumers from every walk of life. The plaintiff has been extremely defensive and vigilant to protect its trademark and has already applied for registration in India and worldwide.

The first defendant Ruchi International is in the business of importing chocolates in India under the brand name “Golden Passion” which is manufactured in China (second defendant) and replica to the plaintiff’s Ferrero Rocher mark. The first defendant settled the matter with the plaintiff however the second defendant did mark the appearance in the court so a compromise decree was passed by the Delhi HC proceeded as ex-parte against the second defendant on 26/05/2016. Delhi HC Bench headed by Justice Yogesh Khanna observed that the act of the defendant is gross by the virtue of adopting the deceptively similar impugned mark and trade dress which has and will cause irreversible damage to reputation and loss to the plaintiff’s business.

Plaintiff’s Argument

1. Plaintiffs argued that Golden Passion chocolates used the same packaging, colour, and box which is exactly similar to the plaintiff’s Ferrero Rocher.

2. That their mark has acquired the status of the well-known mark by the virtue of numerous factors such as trademark and trade dress in various countries since 1982 and has got marks registered in India as well as countries worldwide, due to advertising, promotion activities the plaintiff has acquired immense goodwill.

3. Further, the plaintiff alleged that label, shape, a combination of colours is the uniqueness of the product which constitutes its trade dress which is entitled to protection as being renowned and satisfies the criteria mentioned in Section 11(6) of the Trademark Act, 1999.

4. The chocolate product and its packaging are identical and is almost similar to the plaintiff’s Ferrero Rocher chocolates.

5. The misuse by the defendant by using the same trade dress induces the customers to think that both the products are of the same brand.

6. The Court in its interim order dated 26/03/2014 restrained defendants from

1. Manufacturing, selling, offering for sale, advertising either in a direct manner, or indirectly.

2. Imitation of packaging, colour combination, layout, and design.

7. Despite knowing the injunction order the defendant did not give heed and continued to sell its Golden Passion chocolates in India, and sold numerous products which are lookalike of Ferrero Rocher chocolates under brand name Rowansa.

Defendant’s Contention

The defendant did not file the appearance in the court so the court proceeded to decide the matter ex parte.

Court’s Decision

The court while arriving at the decision relying solely on the plaintiff’s contentions that the plaintiff’s trademark Ferrero Rocher has acquired a status of well-known mark and defendant’s mark is deceptively similar which amounts to passing off as the defendant did not have authorization or any affiliation with the plaintiff.

The court also issued the permanent injunction which restrains the defendants, their partners, principal officers, servants and agents, distributors, and all others who are associated with, from using the plaintiff’s mark for selling or manufacturing confectionery products that are lookalike of Ferrero Rocher.

Apart from this the court also awarded exemplary damage by passing an order for 10 lakhs in favor of Ferrero Spa for the reason of infringement of Trade dress, the loss suffered, and also for violating the interim order and continued to sell products under the same trade dress.

Conclusion

With this decision by the court, it indicates that the court in India can take uncompromising decisions when it comes to the violation of infringement of intellectual property rights. However, the plaintiff must be prepared with strong evidence to counter and protect his rights, as in the present case the trademark was well-known so violation by way of using similar trade dress was prima facie but there can be a possibility where marks not well known and can go unchecked and unprotected.

BY -

Piyush Dabral