No, this was a legitimate case. Ferrero, the company that makes Nutella, has to defend its brand or it loses it.
Do they care that this woman has a Nutella fan page? No, they probably like the page itself. But when Hormel or Proctor & Gamble or Unilever decides to start selling their own brand of “nutella” then Ferrero will try to sure them. And those other companies will point to the website and say “See? You let her use the word nutella without permission. So we can do the same thing now.”
Just for the record, the decision to shut it down was most likely made by C-level executives at the company, not by the “Nutella lawyers”. Certainly there’s more behind their decision than was posted on the woman’s blog- maybe they were using the trademark without license, or making and selling Nutella-branded merchandise, or something.
I doubt they actually “shut it down” via court order or lawsuit, as much as they had their lawyers send a “cease and desist” letter with a threat of a lawsuit.
They may not have had a real solid case, since they didn’t defend the brand well for 6 years, but if Rosso didn’t retain a lawyer to tell her that, or didn’t want to bother defending her site, she probably just shut it down as a result.
In other words, they probably wouldn’t have won in court, but it’s not worth the fan site owner’s money or time to fight it out.
From the website in question:
This does seem like a dumb move by the company.
She’s not using the website to sell her own brand of chocolate hazelnut spread though, is she? IANAL, but I didn’t think it was trademark infringement to simply speak the name of a product.
I don’t think so. There are a ton of Disney fan sites, and Disney controls and owns its brand. Disney long ago decided that there were use wars they wanted to fight and those that they didn’t - and they have always been uber protective of brand - if there was a chance they were going to lose Mickey via a fan site, they would be shutting them down. There are sites for VW owners not owned by VW, sites for Beanie Babies not owned by Ty, sites for Apple and Microsoft not run by Apple or Microsoft. Those companies don’t seem to feel a need to shut down sites that pay them homage.
A lot of people have the mistaken belief that it’s okay to infringe on a trademark as long as you aren’t making money. That’s not true. Any infringement weakens the protection of a trademark if it goes unchallenged.
As others have pointed out, Ferrero’s mistake wasn’t shutting down the site. Their mistake was allowing it to remain online as long as they did.
The law doesn’t require you to shut down every infringement. It says you have to show that you are actively protecting your trademark. So Disney doesn’t have to sue every fan site as long as it sues some fan sites on a regular basis.
Wouldn’t just requesting that she add a disclaimer “Nutella is a registered trademark of blahblah. This site is not affilliated with etc. etc. Nutella’s name and logo used by permission” accomplish the same thing?
I mean, legally speaking, would that still be infringement? And if not, does it still weaken their trademark?
No, but JIF is, as I noticed today on the shelf. At least they have the honesty to call it chocolate hazelnut spread… I wonder if this new challenge has anything to do with Nutella hastily cleaning up the edges of its marketing.
Does Disney do this? Do they randomly choose one fan site to sue every month? I’ve never heard of this happening, but I realize with smaller websites there wouldn’t be as big of an uproar. But I would think there would be some uproar and less people making new fan sites if there were frequent suits over it.
THey likely send cease and desist letters out to all they find - and record themselves doing so - that is active defense - how far they choose to pursue is likely based on content, etc.
Likely what happened here is that word of how good this site was got the attention of the marketing staff (who according to up thread had been helping) and now Nutella wants to roll their own - so they want this one gone so that they are the ‘only’ source for the info.
So, which do we like better:
nutellagirls.com (Simple but kinda dull).
girlsgonenuttella.com (More playful? A riff on other well known sites).
Or should I avoid the probable takedown issues with a more generic approach:
What?! I’m just getting in ahead of the inevitable Rule 34 domain claims. 
By the way Ferraro backed down.
Just wanted to drop in to talk about the act of defending your trademark. It’s not that you have to defend your trade mark per se, but that you have to make sure your trade mark doesn’t become generic.
For example, Xerox. It’s common to say “Xerox this exam paper” even when the copier you’re using is a Canon, or Brother, or whatever. If it gets to the point where your trade mark loses its ability to connote origin (the functional essence of a trade mark, literally a “Trade” “Mark”), then it’s generic, its useless. Wiki has a nice list of generic trade marks: Escalator, Kerosene, Thermos, Yo-Yo. http://en.wikipedia.org/wiki/Generic_trademark
In this case, Nutella is still being used to refer to Nutella spreads, so it’s not a case of genericising the trade mark. It’s barely infringement in the traditional sense - you’re using Nutella to refer to Nutella, what’s wrong about that? What’s wrong, however, is that the website’s use of the trade mark “Nutella” can be taken to be connoting some kind of connection, whether it’s sponsorship, approval, etc. That may give rise to a claim (I can’t say, for example, I’m a Disney day care without implying that I’m somehow connected to Disney, even if I’m not selling fake Disney stuff).
On a non-legal review, you don’t want nutballs speaking for your product. Trademark has kind of evolved past the literal “Trade” “Mark” now, it’s the face of your product. I buy a drink labeled “Coke” not because the label tells me it’s from the Coca Cola company and therefore I know that the product is safe and tasty, I buy it because “Coke” now has a funky image and it’s cool, and so on. It’s the reason why Pepsi wanted MJ to be seen holding that Pepsi.
Imagine if you had Hitler holding your product, and being associated with your trade mark. Sure, people still knows that the product is the same, and it comes from you, but it now “feels icky”. For a real like example, see Burberry and the Burberry Chavs, where hooligans ruined the brand image of a luxury trade mark (the Burberry tartan).
I’m not saying it’s a literal schedule of one lawsuit every thirty days. But Disney wants to be able to show that they are actively defending its trademarks on an ongoing basis.
On a side note, there’s somebody intentionally trying to do this right now against Abercrombie & Fitch. In protest of the company’s elitist image, an activist is buying second-hand Abercrombie & Fitch clothing and giving it to homeless people to wear.
But the Lawyers get paid for doing it. And conflict, no matter how destructive, would be a win for them.
In economics, this is called ‘moral hazard’. In medicine, ‘conflict of interest’.
[quote=“Little_Nemo, post:28, topic:658915”]
The law doesn’t require you to shut down every infringement. It says you have to show that you are actively protecting your trademark.
[QUOTE]
Which law, specifically, says this?
You mean like starting a website that promotes any chocolate flavored hazelnut product EXCEPT nutella. Cause that sounds like something they may have just purchased.