TITLE: NUTELLA’S WELL-KNOWN TRADEMARK WIN: TRANS-BORDER REPUTATION IN INDIAN TRADEMARK LAW

Key Words: IP Law, Doctrine of Spillover Goodwill, Section 11(6), Trade Marks Act 1999, Nutella

Introduction

In July 2025, the Delhi High Court officially declared Nutella a “well-known trademark” under Indian law, granting enhanced protection to the beloved hazelnut-cocoa spread. It is a mark that has gained such widespread reputation and recognition within the relevant segment of the population that when used in connection with any goods or services, even unrelated to them, the relevant people tend to identify the goods or services with the original owner of the mark. This recognition, derived primarily from Nutella’s global reputation and long-standing goodwill, marks a significant moment in how Indian courts treat internationally popular consumer brands even beyond their core markets.

What makes this decision particularly remarkable is that Nutella secured this status not by dominating a localised or niche market in India, but by leveraging its cross-border reputation. The idea of trans-border reputation emerged from the landmark judgment of  N.R. Dongre v. Whirlpool Corporation. In this case, the Supreme Court recognised that a trademark’s reputation could extend beyond the country of origin, especially when the mark is well-known globally. The Court emphasised that consumer perception in India, shaped by international exposure, could establish goodwill even without extensive local operations. It marked a shift from a strictly territorial view of trademarks to one that acknowledges global consumer awareness in assessing well-known status.

At a deeper level, this scenario also asks a broader legal question: To what extent does trademark law in India accommodate trans-border reputation for global consumer goods? Or Does mere global fame, even with limited physical local manufacturing or distribution, justify the same level of protection as a domestically entrenched brand? 

The blog examines the legal test for well-known marks under the Trade Marks Act, unpacks the court’s reasoning in the Nutella case, considers implications for both global and local businesses, and reflects on the future of trans-border brand protection in India.

The Nutella Case

The Delhi High Court’s recognition of Nutella as a “well-known trademark” was based on a thorough review of its global reputation and the extensive evidence provided by its parent company, Ferrero International. Nutella has a significant international presence across more than 160 countries, supported by decades of commercial use, a consistent brand identity, and a large global consumer base. It’s brand recall has been strengthened through worldwide advertising campaigns, strong retail visibility, and a robust social media presence, all of which have contributed to its global status. These factors collectively confirmed that Nutella has a widespread and enduring reputation.

Before the Court, Ferrero argued that Nutella holds significant trans-border goodwill, even in jurisdictions where its physical market presence is limited. The company highlighted its brand valuation reports, global sales data, market surveys demonstrating consumer recognition, and evidence of continuous use since the 1960s. Furthermore, Nutella presented documentation demonstrating strong recall among Indian consumers, influenced by international travel, online shopping habits, and exposure to global advertising. The applicant stressed that its mark was synonymous with hazelnut-cocoa spreads worldwide, strengthening the case for increased protection in India.

The Delhi High Court reviewed affidavits, foreign judgments, market analytics, website traffic, and international promotional material, emphasising Nutella’s strong digital presence and global advertising reach. The Court observed that despite limited physical operations in India, the brand enjoys widespread recognition among Indian consumers. The ruling highlighted Nutella’s global presence, marketing efforts, online visibility, and enforcement record worldwide. Ultimately, Nutella was recognised as a “well-known trademark in India,” indicating that digital and cross-border consumer perception now play a significant role in Indian trademark law.

Legal Framework

The concept of a “well-known trademark” in India is grounded in the Trade Marks Act, 1999, which provides exceptional protection for marks with significant market recognition. The criteria used to assess whether a mark qualifies as well-known are factors such as consumer awareness, extent and duration of use, promotion, and enforcement history.

Even before statutory codification, Indian courts had already created a judicial foundation for recognising well-known marks. In, Bajaj Electricals Ltd. v. Metals & Allied Products (1988), the Bombay High Court protected the “Bajaj” mark despite the defendant’s use in unrelated goods. Later, in the seminal Daimler-Benz AG v. Hybo Hindustan (1994), the Delhi High Court held that famous marks such as “Mercedes-Benz” are entitled to the highest degree of protection, regardless of their product category. In a recent judgment of VIP Industries Ltd. v. Carlton Shoes Ltd. (Delhi High Court, July 1, 2025), the Division Bench held that global reputation alone is insufficient to sustain a passing-off claim in India without proof of prior territorial goodwill, and since VIP failed to establish such goodwill before using the mark in India, the injunction restraining its use was rightly continued.

Through these judgements the criteria used by the courts to identify well known trademarks was to examine: (a) the knowledge or recognition of the mark among the relevant public; (b) the duration, extent, and geographical reach of its use; (c) the extent and duration of advertising and promotional activities; (d) the record of successful enforcement in India or abroad; and (e) the value associated with the trademark. Notably, none of these factors requires extensive physical operations in India, reflecting the modern consumer market shaped by global advertising, e-commerce, and digital engagement.

This jurisprudence directly feeds into the doctrine of trans-border reputation, now well-entrenched in Indian trademark law. Indian courts repeatedly affirm that reputation “travels beyond physical borders” (N.R. Dongre & Ors. v. Whirlpool Corporation & Anr, VIP Industries Ltd. v. Carlton Shoes Ltd.), especially for global brands whose consumer perception is shaped by international advertising, online visibility, and cultural presence. This approach aligns Indian trademark protection more closely with international frameworks such as the Paris Convention for the Protection of Industrial Property and the TRIPS Agreement, both of which mandate strong protection for well-known marks.

Analysis

The Delhi High Court’s decision to accord Nutella the status of a well-known trademark marks an essential development in Indian trademark jurisprudence, particularly in its evolving treatment of trans-border reputation. The ruling reflects judicial recognition of the realities of a digitally interconnected market, where Indian consumers are increasingly exposed to foreign brands through e-commerce platforms, global advertising campaigns, social media, and international travel. In such circumstances, the Court acknowledged that reputation need not be territorially confined to warrant protection under Indian law. This approach reassures multinational corporations that Indian courts are willing to protect internationally reputed brands even in the absence of extensive physical presence or localised commercial operations.

This reasoning is consistent with earlier Indian precedents (Cadbury UK Ltd. v. Neeraj Food Products). Collectively, these decisions indicate a shift from a strict territoriality principle to a consumer-perception-based approach, in which courts examine how and where consumers encounter brands in a globalised economy.

The Nutella ruling, however, highlights the judiciary's willingness to prevent the dilution of well-known marks. Trademark dilution involves the weakening of a mark’s distinctiveness or reputation, even without direct consumer confusion, through means such as blurring (association with unrelated goods) or tarnishment (association with inferior or harmful products). By extending protection across unrelated product categories, the Court aimed to prevent unfair advantage and the erosion of the mark’s unique identity. Nonetheless, this broad protection raises valid concerns.

Excessive safeguarding of well-known foreign marks may inadvertently limit Indian startups, especially when marks consist of common or descriptive elements. Without careful balancing, such protection risks stifling competition and innovation. Courts must, therefore, continue to balance brand protection with market access, ensuring that enforcement does not become excessively exclusionary.

The Nutella decision reinforces India’s alignment with international standards on well-known marks. Still, its long-term legitimacy will depend on a calibrated application that safeguards both global goodwill and domestic entrepreneurial freedom.

Conclusion

The Nutella ruling marks a key shift for Food & Beverages, luxury, and consumer goods brands seeking protection in India, even without a significant manufacturing or retail presence global companies can increasingly rely on their digital footprint, international marketing, and online sales as evidence of goodwill when establishing a well-known status in Indian courts. This change highlights the importance of thorough documentation of cross-border reputation, including consumer surveys, website and social media analytics, digital advertising campaigns, and brand investment data. Indian law can soon adopt a clearer digital reputation standard, especially relevant for online-first, app-based, or e-commerce brands that lack traditional physical operations.  It primarily adapts to address online challenges like brand impersonation, unauthorized content use, and cyber-squatting. International agreements such as the TRIPS Agreement and the Madrid Protocol also contribute significantly by standardising the recognition of well-known marks and ensuring consistent protection of global goodwill across jurisdictions.

In the end, Nutella's victory is not just a one-brand triumph; it signals a new stage in Indian trademark legislation. Though the Indian courts have long established the doctrine of trans-border reputation, the Nutella case helps push this principle toward a much more digital and enforcement-oriented phenomenon, in which online presence, international consumer awareness, and international brand recognition are viewed as compelling indicators of goodwill. Unlike the previous ones, which were based on spill-over recognition or niche consumer awareness, this ruling, once more, formalises and standardises digital reputation as a credible foundation for the well-known status, despite the lack of deep territorial utilisation. By so doing, the Court indicates that it has taken a step towards recognising trans-border reputation and institutionalising it as a force to reckon with in future trademark cases in a progressively borderless market.