Ferrero, Nutella’s parent company, has sent a cease and desist order to Boloco, who have sold a Nutella milkshake at their stores for 14 years.
Ferrero is fine with Boloco, a Boston-based burrito chain, continuing to use Nutella in a milkshake; the Italian company just doesn’t want its trademarked “Nutella” used in the name. The milkshake in question is made with Nutella, skim milk, and frozen yogurt.
As the Citizen Media Law Project discusses, Nutella’s claim is based on its trademark, but it wouldn’t necessarily be a slam dunk case in favor of the makers of the chocolate hazelnut spread:
This is a question of facts, and if this went to trial the lawyers for Boloco and Nutella would spend thousands upon thousands of dollars hiring experts to conduct surveys to discern whether the Boloco sign [advertising a “nutella milkshake”] suggests a level of sponsorship beyond the presence of Nutella as an ingredient in the milkshake in the eyes of the consuming public.
In any event, the chances of this making it to trial are skim, er, slim to none as Boloco CEO, John Pepper, has already mentioned looking for different chocolate hazelnut spreads to continue making a similar milkshake. But the cost to Boloco, according to Pepper, could measure in the “tens of thousands” just in getting menus and menu boards reprinted without “Nutella” as well as losing sales of one of its most popular drinks.
And that’s a lot of cash any way you shake it.
What do you think of Ferrero’s cease and desist letter and Boloco’s response?