Thursday, April 21, 2011

The (Deliciously) Legal Implications of Nutella

Ferrero SpA, the manufacturers of Nutella (in this writer's opinion, probably the peak of human inventive capacity) have launched a lawsuit against a Singaporean coffee chain for trademark violation:
Sarika Connoisseur Cafe Pte, owner of 30 coffee shop outlets in Singapore, is trying to pass off the Nutello drink as being associated with Nutella, Ferrero claimed in a lawsuit filed in Singapore High Court.
Sarika operates The Connoisseur Concerto chain of restaurant/cafes, and although the Nutello drink is not currently displayed on their website, if the Nutello drink's trademark is similar to their primary logo, Ferrero will have a legal battle on their hands, as their argument essentially will have to be that the word fragment "nutell-" in conjunction with any food product with both hazelnut and chocolate elements is a vital part of the Nutella trademark, which one expects Sarika will contest. Other than Nutella Snack And Drink (which is a divided cup with iced tea, Nutella and cookie sticks sealed apart from one another) Ferrero hasn't produced many spinoff products using the Nutella brand (something that would have strengthened the argument that the trademark should be associated with all types of hazelnut/chocolate food products).

(One also notes the existence of Nutello brand ice cream, produced by the Swedish company Lejonet and Bjornen, which is a vanilla ice cream with hazelnut/chocolate-cream globs in it. This writer was not able to find any evidence of Ferrero having launched action against these Swedes.)

The tort of passing off one's trademark is a serious one (as trademark valuations can extend into the tens of millions of dollars), and it's understandable that Ferrero would seek to defend their trademarks aggressively even if the suit is potentially likely to fail: the genericization of a trademark (such as "aspirin" or "yo-yo," both originally owned brands) is something most companies will always strive to avoid. In the case of Nutella, most other hazelnut/chocolate spreads have wildly dissimilar names and appearances so as to avoid attracting the tort of passing off.

- Christopher Bird, Toronto
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