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Mint
07-08-2025
- Business
- Mint
Mint Explainer: From Taj to Nutella, why more brands are racing for the ‘well-known' trademark tag
The Delhi high court recently declared Nutella, a globally loved chocolate spread, a 'well-known trademark" in India. This recognition is more than a nod to popularity. It's a legal safeguard to protect the brand's identity, reputation, and consumer trust from misuse and counterfeiting. Nutella now joins the ranks of elite names such as Haldiram's, Peter England, Taj Hotels, and the likes of late Ratan Tata, who received this level of protection under Indian trademark law. Mint explains why more brands are moving courts for the 'well-known' tag and how they use it. The Nutella case and what prompted the court to step in The Nutella verdict on 28 July followed a 2021 raid that uncovered nearly 1 million counterfeit Nutella jars in India. The packaging closely mimicked the original, posing health risks to consumers, especially children. The court highlighted Nutella's global use since 1964, its Indian market presence since 2009, strong sales, and heavy advertising investment ( ₹16 crore in 2022–23). Justice Saurabh Banerjee awarded ₹30 lakh in damages and a permanent injunction, emphasising the need for high diligence in food-related IP cases. What does the 'well-known" tag mean in trademark law? Under trademark law, a 'well-known" mark is one that's recognised by the general public beyond its specific industry. For example, 'Taj' isn't just associated with hotels—it signifies luxury and heritage. The designation offers expansive protection, enabling brand owners to act swiftly against infringers, even in unrelated sectors. This concept has international roots, anchored in treaties like the Paris Convention (Article 6bis) and TRIPS Agreement (Article 16), which obligate member countries to provide special protection to well-known marks. To support implementation, the World Intellectual Property Organization (WIPO) issued a joint recommendation that outlines best practices for countries to follow. In response, many jurisdictions, including India, have created well-known mark registries that provide formal legal recognition and enforcement mechanisms in line with WIPO's guidance. Why the rise in applications now? Brands today aren't just reacting to infringement, they're getting proactive. Legal experts say the sharp rise in applications is driven by the digital commerce boom, rising cases of counterfeiting and piracy, and the judiciary's evolving understanding of brand equity. 'It's really about how brand value and IP have become central to business strategy, especially in an age where online infringement, counterfeiting, and cybersquatting are growing threats," said Alay Razvi, managing partner at Accord Juris. 'Companies are becoming far more proactive in securing this extra layer of legal protection." A major turning point came with the 2017 amendment to the trademark rules, which introduced Rule 124. Prior to that, only courts or tribunals could grant 'well-known" status, typically during litigation. Rule 124 allows brand owners to independently apply to the registrar of trademarks by submitting evidence such as sales data, advertising expenditure, and media coverage—along with a prescribed fee. This removed the need for legal proceedings, making brand protection faster and more accessible. 'With increased digital trade, cross-border reputation, and the 2017 trademark rules streamlining the recognition process, well-known status has become a strategic tool, not just a legal accolade," said Ankit Sahni, partner at Ajay Sahni & Associates. 'Courts are also increasingly responsive to the idea that certain brands enjoy trans-border goodwill that merits expansive protection across unrelated categories," Sahni added. India's rise in filings reflects this shift. In 2024, the country ranked third globally in trademark filings, with nearly 5.4 lakh new applications, closely trailing the US at just under 5.7 lakh. How does it help brands? Trademark experts say this status brings tangible commercial advantages. It allows brands to command higher royalties, stronger bargaining power, and faster legal remedies. 'In the commercial realm, the fortified legal status allows the brand owner to command premium pricing power, including higher royalty rates and franchise fees from partners. This gives the brand owner a stronger bargaining position during negotiations," said Swati Sharma, partner (head - Intellectual Property) at Cyril Amarchand Mangaldas. The tag significantly boosts enforcement, especially online, said Sonal Madan, partner at Chadha & Chadha IP Law Firm. 'Online intermediaries tend to act faster when takedown requests come from well-known brands," she noted. 'This quicker response helps prevent misuse and strengthens brand protection on the internet." Sahni added that the well-known status not only strengthens dilution claims and speeds up injunctions, but also acts as a psychological deterrent. 'It creates a chilling effect, making infringers think twice before taking on a legally fortified brand." The role of dynamic injunctions Well-known trademarks are increasingly being used alongside dynamic injunctions, a powerful judicial tool that allows brand owners to preemptively block mirror websites and repeat infringers without returning to court repeatedly. The Delhi high court has led this evolution. For example, JioStar was granted a dynamic injunction to prevent illegal streaming during the India Tour of England 2025. Fashion designer Rahul Mishra received similar protection for his brand. Other recipients include Gameskraft, Baazi Group, Culver Max (Sony), and Zee Entertainment, with courts ordering domain blocks and proactive safeguards. 'This synergy makes it easier and quicker to secure injunctions for digital enforcement, including domain name blocking," said Swati Sharma of Cyril Amarchand Mangaldas. 'The legal framework is also bolstered by a physical barrier—customs enforcement. Brands that record their marks with Indian Customs empower port authorities to seize counterfeit goods before they enter the market." Is there a risk of overuse? Yes. As more brands seek this elite status, experts warn of potential misuse. Some companies may use the 'well-known" label to pressure smaller businesses or stifle fair competition, even in unrelated product categories. 'The registry and courts are being cautious," said Madan of Chadha & Chadha IP Law Firm. 'The aim is to protect genuine goodwill, not weaponize IP to shut down legitimate players." While the tool is powerful, checks are in place. As filings rise, so does the scrutiny, ensuring only truly deserving brands receive this legal recognition.
Time of India
29-07-2025
- Business
- Time of India
Nutella gets ‘well-known trademark' status in India: Delhi High Court rules in Ferrero's favour
Live Events (You can now subscribe to our (You can now subscribe to our Economic Times WhatsApp channel The Delhi High Court has declared Italy's leading chocolate producers and confectioner Ferrero International SpA 's 'Nutella' a well-known trademark under Indian Trade Marks Act, 1999, considering its goodwill and reputation across the globe, including court said that Ferrero International SpA , part of the world-renowned Ferrero Group, and its counterparts have been continuously and uninterruptedly using Nutella since 1946 and have valid and subsisting registration thereof from Saurabh Banerjee in an exparte order said that Ferrero's Nutella trademark has completed 50 years of its presence in the Indian market in 2014. 'By virtue of its long-standing use, extensive marketing, and unique trade dress, 'NUTELLA' has become synonymous to a thick creamy hazelnut cocoa plaintiffs have been able to cross the threshold,' the court said, adding that the mark has also been recognised by WIPO and the International Trademark Italian company has successfully met the statutory test under the 1999 Trade Marks Act for well-known mark recognition, noting Nutella's presence globally since judge noted that the Italian company has spent Rs three crore, Rs seven crore and Rs 16 crores from FY 2020-21, 2021-22 and 2022-23, respectively, on promotions. Besides,it has gross sales figures of Rs 233 crore, Rs 145 crore and Rs 106 crore for the financial years 2020-21, 2021-22 and 2022-23 respectively. "This leaves no shadow of doubt that plaintiffs are well established in the markets all across the globe and are not mere fly-by-night operators. Their registered trademarks Nutella and its variants are recognised all across the globe, including but not limited to India," said Justice Banerjee direction came on a trademark infringement suit filed by Ferrero SpA and its affiliates against Thane-based MB Enterprises which engaged in manufacturing, supplying, distributing and selling large quantities of counterfeit Nutella products bearing identical trademarks, labels, and trade dress to counterfeiting was uncovered during a 2021 raid by the Maharashtra Food and Drug Administration (FDA), which seized nearly 10 lakh units and packaging materials imitating Nutella court noted that counterfeiting posed serious public health risks - particularly to children - and involved clear mala fide intent to deceive consumers. 'If not stopped, the same can cause serious public harm…The aspect of due diligence and circumspection is necessary,' the order stated, while permanently restraining M.B. Enterprises, its partners, proprietors from manufacturing, packaging, supplying, distributing, selling and dealing in any manner whatsoever with counterfeit Nutella products or any product similar to the petitioner's trademark."... if the defendant is allowed to continue under such circumstances, it is likely to result in causing utter confusion, lead to deception and cause damage amongst the members of the public at large as also to the long well-established goodwill and reputation of the plaintiffs as well," the order stated, asking M.B. Enterprises to pay Rs 30 lakh as damages to Ferrero and costs and special costs of Rs two lakh to Delhi High Court Bar Association Lawyers Social Security and Welfare Fund.
Mint
29-07-2025
- Business
- Mint
Delhi HC declares Nutella a ‘well-known trademark' in Ferrero filed infringement case
The Delhi High Court has officially declared Nutella, the popular hazelnut cocoa spread, as a 'well-known trademark', observing that the brand enjoys widespread recognition not just in India but across the globe. 'This leaves no shadow of doubt that plaintiffs are well established in the markets all across the globe and are not mere fly-by-night operators. Their registered trademarks 'NUTELLA'/ and its variants are recognised all across the globe, including but not limited to India,' LiveLaw quoted Justice Saurabh Banerjee in his ruling. The Court also took into account that Nutella had already been recognised as a 'well-known trademark' by both the World Intellectual Property Organization (WIPO) and the International Trademark Association. The judgment came in response to a suit filed by Ferrero SpA, the Italian confectionery company behind Nutella, against a company accused of trademark infringement. According to the allegations reported by LiveLaw, the defendant was engaged in the manufacture, supply, and sale of counterfeit Nutella products that bore identical trademarks, labels, and trade dress to that of Ferrero's original. Ruling in Ferrero's favour, the Court expressed concern over the public health risks posed by such counterfeit goods, particularly because they are edible products consumed by a wide demographic, including children.
Mint
20-07-2025
- Business
- Mint
Nokia moves high court over rejection of 5G network slicing patent
Nokia Technologies, a subsidiary of Finnish multinational Nokia Corp., has approached the Delhi High Court challenging the Indian Patent Office's refusal to grant its patent for an 'enhanced registration procedure' designed to support its advanced 5G network slicing technology in India. On 17 July, Justice Saurabh Banerjee issued notice to the assistant controller of patents and designs, directing a response to Nokia's plea. The matter is scheduled for further hearing in November. Network slicing lets telecom companies divide one network into many separate parts, like creating different lanes on a highway. Each slice is used for different things, such as faster internet for phones, special connections for hospitals, or smooth gaming. This makes the internet faster, safer, and more reliable. The counsel for the patent office sought six weeks to file a reply, according to the court order. Any rejoinder, if required, can be filed within four weeks after that, the order said. Nokia's petition challenges the 8 January order of the assistant controller of patents, which rejected its invention on the grounds of lack of novelty, stating that the innovation already exists. Filed on 19 October, Nokia's patent claimed a faster, more secure method for devices to register on dedicated 5G network slices by immediately invoking third-party authentication during the registration ('attach') process. This approach, Nokia argued, ensures smoother and more secure connections, especially for enterprise-owned slices needing additional checks. The company said its method avoids devices attempting to access slices without proper authentication, enhancing overall network efficiency and security. Nokia also informed the patent office that similar patents had been approved in the United States, Japan, and South Korea, proving its international recognition However, the Indian Patent Office rejected all claims. It cited 3GPP's technical standard document D1 as prior art, stating that similar methods were already described, making Nokia's idea neither new nor inventive. The office added that the invention was purely software-based without any new hardware implementation, thus non-patentable under Section 3(k) of the Patents Act. Further reasons included unclear claim language, multiple dependent claims creating ambiguity, and failure to file updated disclosures within prescribed timelines. Due to these issues—lack of novelty, obviousness, software-only nature, unclear claims, and documentation non-compliance—the patent was refused despite Nokia's arguments An emailed query sent to Nokia Technologies remained unanswered till press time. Network slicing originated as a concept developed by telecom industry researchers and was standardized by 3GPP (3rd Generation Partnership Project) as part of global 5G standards (from Release 15 onward). 3GPP is a global collaboration of telecom standards organizations that develops technical standards for mobile networks. Leading telecom vendors including Nokia, Ericsson, Huawei, and Samsung have developed commercial network slicing solutions. Major operators such as Verizon, AT&T, T-Mobile, Vodafone, BT, Deutsche Telekom, China Mobile, and SK Telecom are actively deploying or testing it worldwide. Recently, Google Fiber announced that its customers may soon get more control over their home internet. On 30 June, Google Fiber said it has partnered with Nokia to test network slicing, which lets users create dedicated lanes for specific activities like gaming or video calls. Countries with live or pilot deployments include the US, the UK, Germany, Japan, South Korea, China, and parts of Europe, with applications spanning factories, ports, healthcare, and premium broadband services.
India Gazette
10-07-2025
- Entertainment
- India Gazette
Delhi HC restrains Kuku FM from streaming new episodes amid Pocket FM's copyright lawsuit
New Delhi [India], July 10 (ANI): The Delhi High Court on Thursday restrained audio platform Kuku FM from airing new episodes, acting on allegations of copyright and trademark infringement raised by rival Pocket FM. Pocket FM has filed a lawsuit seeking 10 million dollars (approximately Rs 80 crore) in damages, alleging over 30 instances of unauthorised copying by Kuku FM. The order was passed by Justice Saurabh Banerjee, who directed Kuku FM not to release any further episodes of the contested shows and to submit details related to the content in question. Senior Advocate Amit Sibal, appearing for Pocket FM and briefed by law firm Shardul Amarchand Mangaldas, argued that Kuku FM had engaged in 'wholesale and systematic copying' of Pocket FM's original content, including show titles, characters, posters, and entire storylines. He emphasised that Pocket FM had spent years developing a robust content strategy, which Kuku FM was now exploiting for unfair commercial gain. Among the examples presented, Sibal pointed out that Kuku FM had replicated Pocket FM's popular show Shoorveer, including the use of an almost identical poster, indicating clear and deliberate imitation. In another instance, Kuku FM allegedly uploaded full episodes of Insta Millionaire, retaining Pocket FM's branding in the voiceover, instructing listeners to log in to the Pocket FM app. To preserve key evidence, Pocket FM has also sought the appointment of a local commissioner to inspect Kuku FM's platform and prevent tampering. Sibal further argued that despite facing multiple lawsuits in the past, Kuku FM continues to copy content without any justification or corrective measures. In response, Kuku FM's counsel, Advocate Saikrishna Rajagopal, contended that the shows had been available on its platform since June 2024 and claimed that Pocket FM's legal action was delayed. He argued that the plaintiff had not made a clear case for urgent interim relief. Nevertheless, the Court restrained Kuku FM from airing new episodes and listed the matter for further hearing on August 29. (ANI)
