Is Nutella nuts?

Trademark infringement is one. But should a trademark owner always act against any and all infringements? No! Today, a lesson from the IP practice.

Ferrero, makers of Nutella, the world famous hazelnut/chocolate spread are careful with the use of their name by third parties. As they should with such a brand. They have attacked anything from a smoothie shop (that used their product) tot a peer-to-peer network, Gnutella, to keep their name exclusive. But, as a brand owner, you should always be careful with attacking fans.

Ferrero did this. There is a website out there: World Nutella Day. Each year on 5 February, they encourage everyone to make something with Nutella. Anything.

Ferrero apparently wasn’t very fond of this idea. They sent a cease and desist letter. Indeed, a cease and desist letter to a Nutella-fan that was promoting everyone to buy Nutella!

World Nutella Day founder Sara Rosso states: “On May 25, 2013, I’ll be darkening the World Nutella Day site. (…) In compliance with a cease-and-desist I received from lawyers representing Ferrero, SpA (makers of Nutella). The cease-and-desist letter was a bit of a surprise and a disappointment, as over the years I’ve had contact and positive experiences with several employees of Ferrero, SpA., and with their public relations and brand strategy consultants, and I’ve always tried to collaborate and work together in the spirit and goodwill of a fan-run celebration of a spread I (to this day) still eat.

Rosso seems very laid back on the issue: “I’ve spent hundreds of hours interacting with you, the fans, collecting and sharing your contributions, updating the World Nutella Day website with more than 700 recipes which were painstakingly gathered from bloggers sending me their posts and by scouring the internet for the best Nutella recipes, Tweeting and sharing on Facebook your favorite sayings, stories, and links about Nutella, and encouraging everyone to try it just once! Thanks for letting me be a part of that – it was truly a labor of love by a fan and something I did as a fan, in my (very little) spare time, and I have a full-time job I love. I hope that February 5th stays alive in your hearts and on your spoons, and hopefully it’s arrivederci (see you soon) and not addio (goodbye).

Legally correct perhaps, but maybe economically and brand loyalty-wise not such a smart move.

It, however, seems that very recently Ferrero has been in contact with Russo. They worked out out an arrangement by which Nutella Day will be reinstated with the company’s blessing. The company is blaming the cease & desist on an over-zealous IP lawyer.

Sure, we’ll take the blame. No problem.

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Erwin Hauër

“Hope is not a strategy.”



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