The Ferrero Group, which manufactures the well-known NUTELLA brand hazelnut and cocoa spread, filed a trademark infringement suit against a Brooklyn crêperie over its use of allegedly confusingly-similar marks.
The lawsuit, filed in the U.S. District Court for the Eastern District of New York, alleges that crêperie, GCAS Cafe, “specializes in offering food and drinks which use Ferrero’s NUTELLA brand hazelnut and cocoa spread as the most prominent ingredient.” The cafe had been using the term “Nutelleria” in connection with signage at its cafe, domain names of websites (www.NutelleriaNY.com, www.NutelleriaMia.com, and www.NutelleriaLA.com), and social media accounts on Facebook, Twitter and Instagram. Ferrero alleges that when its attorneys were negotiating with GCAS’s attorneys about use of “that mark, the cafe changed from using “Nutelleria” to “Nuteria” on its signs and on the internet. See, e.g., www.nuteriaNY.com and facebook.com/NuteriaNY. Although GCAS no doubt believed this switch would satisfy Nutella, it was mistaken.
In the complaint, Ferrero contends that consumers who type in the term “Nutelleria” in Google or type in the “Nutelleria” domain names are redirected to the current “Nuteria” websites and, thus, “the term NUTELLERIA functions as a mark to direct traffic to the GCAS cafe.” Ferrero further contends that (a) the “Nuteria” mark is displayed with “Nu” presented differently than “teria” to convey that consumers should pronounce “Nu” the same way as in “Nutella” and (b) the “prominent display” of Nutella posters and jars at the cafe is such that it creates the impression that there’s a “connection between GCAS Cafe and Ferrero or the NUTELLA” trademarks.
In light of these and other concerns, Ferrero asserts claims for trademark infringement and trademark dilution under federal law, a claim under New York state’s anti-dilution and unfair trade practices statute, and a common law claim for unfair competition.
This case is intriguing because GCAS is clearly a fan and promotor of Nutella and the parties’ interests are generally aligned. The problem, of course, is that GCAS created a new mark — Nutelleria — that echoed and called-to-mind the NUTELLA mark. But for reasons unknown, negotiations between the parties broke down when GCAS unilaterally (as alleged by Ferrero) changed the mark to “Nuteria” which Ferrero does not specifically allege as being confusingly similar to Nutella.