Delhi High Court declares Ferrero’s “Kinder Joy” Mark to be a Well-Known Trademark – Eshwars
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Delhi High Court declares Ferrero’s “Kinder Joy” Mark to be a Well-Known Trademark

Author: N.V.Saisunder
 
Recently the Hon’ble High Court of Delhi vide its order in December 2019, in an infringement suit filed by Ferrero S.P.A, (“Ferrero”) an Italian manufacturer of chocolates and confectioneries, declared the trademark “KINDER JOY” as a well-known trademark in India. Ferrero S.P.A filed a suit of infringement suit and passing off before the Hon’ble High Court of Delhi against Kamco Chew Food Private Limited’s product “KAMCO MOTU PATLU- Biscuit Ball with Choco & Milk Rabdi (“Kamco”) on the grounds that it was infringing the KINDER JOY trademark and trade dress. Ferrero alleged that Kamco had copied, the following elements of the Kinder Joy chocolate product:
 

  • Egg shape of the product;
  • Colour scheme of the packaging;
  • Graphical elements on the packaging; and
  • Presentation of the contents.

 
Based on Ferrero’s submissions regarding the various similar and deceptive aspects of the trade dress between its KINDER JOY Product and that of Kamco’s products, the court, in its order dated December 18, 2019, concluded that Kamco’s products were deceptively similar to those of Ferrero. In view of the prima facie case of trademark and trade dress infringement and passing off made out by Ferrero against Kamco, the court granted a permanent injunction against Kamco and further awarded the costs of the suit around INR 2 million against Kamco. Lastly, the court also declared Ferrero’s KINDER JOY a well-known mark in India.
 
It is interesting to note that the new Trademark Rules which came into effect in the year 2017 formally created provisions and procedures that enables trademark proprietors to make applications for recognition of their trademarks as well-known trademarks in India. Under the Trademark Act and Rules the Registrar of Trademarks is empowered to include a trademark as a well-known trademark inter-alia if a particular mark has been recognised as such by a court of law in any proceedings before it. That apart the Registrar of Trademarks also has a discretionary power to declare a well-known trademark based on a formal application made by a proprietor of a trademark under the Act and the Rules.

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