For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Wednesday, 21 August 2013

Ferrero’s Nutella infringed by Nugtella in California

Start the day with Nugtella?
If you’re travelling to the West Coast of the United States this summer, you will find plenty of fun for everyone: from the wonders of Muscle beach in Venice to the high-tech campuses in Silicon Valley, you can grab a bite at a '50s original diner, and you may if you fancy it, pick up a jar of Nugtella, the hazelnut spread infused with hash oil (nb nug refers to a high quality marijuana, not a chicken nugget).
For the latter, all you need is a California medical marijuana card. While this new food product might seem an astonishing mix to many, its content is not illegal per se. Since 1996, medical marijuana can be legally purchased if you have a prescription by a doctor and these Nugtella jars produced by Organicares are being sold legally in Medical marijuana dispensaries in California.

News commentators are reporting on the incredible nature of this product and at least acknowledge that Ferrero the producer of Nutella, is not involved at all. However, the trade mark lawyer cannot help but counting the possible claims for a cause of action. For example, Section 43(a) of the Lanham Act proscribes the "false designation of origin through the wrongful use of another’s trade mark" and courts will look at the following factors: strength of the plaintiff's mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers.



Did these cats abuse
Nugtella ...?
In this case, Nutella is a famous mark, not only does the Nugtella packaging resemble the original Nutella - the jars are similar in shape and uses the familiar red, white and black color scheme of the logo- Organicare seems to advertise its product as the “weed nutella”.  Although there is no likelihood that Ferrero will ‘bridge the gap’ or very few likelihood of actual confusion due to the different sales channels and prior obligation to obtain a Doctor’s prescription -- unless the customer has already been consuming a similar content product -- Ferrero would have a cause of action for trademark dilution or taking unfair advantage of its famous hazelnut spread: either under the US Lanham Act Section 43 (c) whereby dilution by tarnishment is enforceable or under Article 8(5)CTMR whereby it is prohibited to take unfair advantage of a well-known mark, in particular when there is a risk of a negative image being transferred to the senior mark.

As of today, Ferrero which is notorious for protecting its Intellectual Property rights -- much to the dismay of fans, World Nutella day came to an end last May-has not made any public comment or taken any legal steps yet  -- while the Piemontese cat is away for August vacation, the infringing mice can play.
If you get it while supplies last, see suggested recipes by Organicare on Instagram.
Cat eating Nutella here.
Does Catnip get cats high?

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