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Article 4 Feb 2020

Managing trademark fans, part III

It's the 13th anniversary of World Nutella Day! This non-official fan day has an interesting history.

World Nutella Day

A few years ago, we wrote about World Nutella Day and how Nutella’s parent company Ferrero SpA nearly came to blows with loyal fans of the chocolate spread.

It all began in 2007, when blogger and Nutella superfan Sara Rosso decided to celebrate her favourite spread by nominating 5 February as World Nutella Day and launching what became an extremely popular website and Facebook page. In 2013, seven years later, Ferrero SpA took action to get the pages removed and demanded that Rosso take the website offline for infringing its trademark.

But Nutella fans didn't have to mourn for long: World Nutella Day was reinstated in 2015! Rosso was allowed to continue celebrating her favourite brand after she and Ferrero reached a satisfactory arrangement in which it acquired the websites in exchange for a donation to the United Nations World Food Programme.

It’s difficult for companies to know when it’s right to allow fans to use their trademark

Baby Yoda bootleg

Nutella fans showed that they value having a dedicated Nutella Day. Disney fans clearly also have strong demands, as seen after the screening of the Disney+ series The Mandalorian, which led to a huge demand for ‘Baby Yoda’ merchandise. Disney and Lucasfilm had deliberately held off registering trademark applications for Baby Yoda or designing Yoda-related merchandise to avoid revealing the existence of the character before the film came out. Unfortunately, this resulted in a flood of counterfeit ‘Baby Yoda’ merchandise.


Trademark protection versus goodwill

Some trademark proprietors will be delighted to have such fans; others will come down hard on them. That’s because it’s difficult for companies to know when it’s right to allow fans to use their trademark. On the one hand, aggressive policing could result in a loss of goodwill. Yet at the same time, it's important for companies to keep on opposing trademark use that infringes their rights, even if it's by fans of their products.

Trademark proprietors therefore have to weigh up whether or not fans are making ‘nominal fair use’ of their trademark. And fans must ensure that the activities they engage in don’t become commercial in nature. As we said in our previous article, trademark proprietors always need to carefully consider whether their strategy for building and protecting their trademark is appropriate to what they want to oppose. Otherwise, an ill-judged legal action could turn the loyal fans of a carefully nurtured brand into formidable opponents.

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