Nutella: Sweet Spread or Trademark Bully?
Time for a confession: I’m not really a fan of Nutella. I can’t tell if it’s too sweet for me or what it is, exactly, but I just can’t summon up the passion for the spread that everyone I know seems to share. (Calm down, Internet, I still like bacon.) Nonetheless, I will rise to the defense of its fans against what appears to be a case of trademark bullying – or, at least, overreach. Time to cross February 5 off your calendars, because World Nutella Day is no more.
World Nutella Day was created in 2007 by Sara Rosso, a Milan-based writer who focuses on technology, communication, photography, food, and travel. The Wold Nutella Day phenomenon grew to the point where the Facebook page for World Nutella Day has almost 40,000 fans. OK, the word “phenomenon” may be overstating the case, given that Nutella’s own Facebook page has over 17 million fans.
As you might expect, the World Nutella Day concept is simple: “Nutella fans and lovers unite for one day!” Finally, the divisions between Nutella fans and lovers can finally be healed. The Facebook page contains this helpful note: “We are not affiliated with or representing Ferrero, SpA, the makers of Nutella.”
This all seems fairly straightforward. A fan takes the time and effort to promote a product? That’s exactly what every consumer product dreams of in today’s social marketing world. Nutella, however, was not amused. In April of this year, the lawyers for Nutella producer Ferrero, SpA came crashing down off their sugar rush and fired off a cease and desist letter to Ms. Rosso.
As Ms. Rosso stated on the Nutella Day blog:
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.
She told the Huffington Post: “This is something I did as a fan…I have a full-time job; I’m not trying to make a business out of this.”
Since both Nutella and Ms. Rosso are based in Italy, we can assume that Italian law applies to this matter. However, if we were to apply the principles of US trademark law, would Nutella be in the right? I think a case could be made that Ms. Rosso’s use of the mark NUTELLA entitled her to a fair use defense to a claim of trademark infringement. Her use was noncommercial, she explicitly disclaimed any connection to Ferrero, and, in context, I’d argue that consumers can make a clear distinction between a fan-created celebration of a product and a marketing effort that comes from the manufacturer itself. However, the not-so-sweet reality is that fair use defenses can be costly and challenging to mount, and the results are hard to predict. There’s little doubt that Ms. Rosso did the wise thing from a financial perspective in acquiescing to Ferrero’s demands.
Did Ferrero do the right thing by their brand? Based on the media coverage of this story that I’ve seen, Ferrero comes off like a bully in this situation. I wouldn’t be surprised to see a minor backlash against Ferrero and the Nutella brand. The brand won’t be destroyed – it’s doubtful that their sales numbers will even see a measurable drop, unless this story grows much larger – but in an era when bad news about a brand tends to spread much faster than good news, it doesn’t seem worthwhile to shut down a fan-based celebration of your product.
This is a case where the letter of the law is less significant than the overall brand strategy. Even if trademark law is on their side (which is unclear at best), I would always advise a client to be extremely cautious when sending out a cease and desist letter to a fan of their goods.
UPDATE: Commenter Simi Fafowora points out that Ms. Rosso has updated her blog to indicate that Ferrero has contacted her and they appear to be resolving their dispute. Once again, “social shaming” has compelled a brand company to see the light of day. Thanks for the tip, Simi.
