A GLIMPSE OF THE FAMOUS FERRERO ROCHER INFRINGEMENT CASE

“A Great Trademark is Appropriate, Distinctive, Unique, Dynamic and Memorable ”

In recent years, most of the world is eating chocolate, which not only gives you energy but also makes you feel happy due to its special endorphin-boosting ingredients. Also, when we talk about chocolate, most of the time consumers’ choice is a very well-known chocolate Ferrero Rocher. Ferrero Rocher, produced by Ferrero Spa, ranks among the top four confections in the world. This chocolate has a unique appearance as well as taste, and the packaging is also a unique selling point. A few of Ferrero Rocher’s packaging are produced herein for reference:

In the year 2018, Ferrero was sentenced to INR 1 million in damages for breaching Ferrero Rocher’s “trade dress”. Trade dress is a kind of intellectual property that deals with the appearance of the product. As consumer behavior increases, design and aesthetics become more important, and distinctive yet attractive packaging becomes even more significant, especially for edible products. Trade dress has become essential for most brands, as all creativity must be protected by intellectual property rights in the legal system. 

Meaning Of A Trade Dress :

A Trade dress is the look and feel of the product. This is often known as the packaging of the product under The Indian Trademark Regime can be an underrepresented attribute that defines how a product looks like and in which manner the product reaches its customers The major component of the trade dress is the color combination and the style in which it is represented,

Point Of Law In Trade Dress :

Section – 2 (zb) of The Trademarks Act 1999 – “trademark” means:

a mark capable of being represented GRAPHICALLY and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, THEIR PACKAGING, and combination of colors.

In case of trade dress infringement, the rightful IP Holder has to prove that the appearance or “dress-up” of the product or service is uniquely associated with the IP holder of the product and is a significant factor in recognizing the rightful IP Holder’s product. ^{[ 1 ]}

Essentials Of A Trade Dress :

1. Everything that forms the overall picture of the product and generates the image of the brand. 
2. The combination of shapes, colors, and graphics that abstract the trade dress must not provide consumer benefits other than product perception. 
3. The legal requirements for registering trade dress are the same as for words and logos. 
4. A product’s appearance is the differentiating factor that sets it apart from others in the same sector. 

Ferrero Spa & Nr vs M/S Ruchi International & Anr on 2 April 2018 New Delhi High Court

Although Ferrero’s products have been marketed in India for a long time, the company officially started operations in India in 2008 under the name Ferrero Rocher India Pvt. The plaintiff has established itself as a leading manufacturer of premium chocolate and confectionery products, with a large consumer base that “trusts the unique taste and special visual appeal of chocolate.” 

The defendant, Ruchi International, was a chocolate importer and distributor who sold chocolate in India under the brand name Golden Passion. The chocolate was strikingly similar in appearance to the plaintiff’s Ferrero Rocher chocolate sold under the Ferrero Rocher brand name and trade dress which was exported from China. When the case was independent, the first defendant was able to settle the matter amicably with the plaintiff and as a result, the Delhi High Court issued a settlement order and the case went unilaterally against the defendant^. [2]

The plaintiff alleged that the chocolate sold by the defendant under the name “Golden Passion” was similar to the plaintiff’s chocolate sold under the brand name “Ferrero Rocher”. The Trade dress of the Plaintiff and the defendant is produced herein below:

Plaintiff’s trade dress (including covers, labels, colors, and designs) should be recognized under Section 11(6) of the Trade Marks Act, 1999, as it is a distinctive feature of the packaging of its products. They also alleged that unauthorized use of such identical/seemingly similar trademarks or trade dress would be infringing and would give consumers the false impression that the defendant’s products were somehow associated with the plaintiffs. These acts inevitably lead to confusion and deception and therefore constitute violations.

Defendant did not contest this claim and the court decided the matter ex parte.

The Delhi High Court, taking into account the evidence submitted by the plaintiffs, issued an order accepting the Ferrero Rocher mark and trade dress as well-known marks within the meaning of the law. The court also held that the sale of products using trademarks and trade dress that was falsely similar to those of plaintiffs constituted infringement because there was no license granted by or connected with plaintiffs. The court also issued a permanent injunction barring the defendants, including their partners and associates, from dealing in any way with products imitating the plaintiff’s Ferrero Rocher chocolates, which constitutes an infringement of the trade dress. Further, Ferrero Rocher was granted INR 1 million as monetary damages along with an interest of 10% per annum from the date of filing of the suit up to the date of realization, and a decree was passed against the second defendant for infringement of the plaintiff’s registered mark and trade dress and violation of the interim order.

This was not the first time when Ferrero Rocher SPA got aggressive about its IP Rights, in a similar judgment in the case of Ferrero Rocher SPA & Anr. v. Piyush Devangan & Anr. CS(OS) 872 of 2014, the Delhi High Court granted another ex parte order in favour of Ferrero Rocher, on the basis of trademark as well as trade dress infringement.

Author’s End Note :

With the increasing influence of marketing and the demand for aesthetic products, trade dress has become an important part of the intellectual property of companies and their brands. Although there is no specific provision in Indian trade dress law, Indian courts have adopted the concept significantly, as evidenced by case law. While the doctrine of trade dress is still in its infancy in the country, the Ferrero Rocher case recognizes trade dress protection for reasons similar to trademarks and brand names that have become distinctive and unique over time. It highlights the growing importance of the courts in determining a trademark or a brand name that has acquired distinction and uniqueness over a period of time.

REFERENCES :

1. https://www.worldtrademarkreview.com/article/ferrero

2. https://www.lexology.com/library/detail.as