When the label MASTELLA is filed for, among other things, chocolate, coffee and ice cream, alarm bells ring at Ferrero. A different word appears on the MASTELLA label, but the overall get up looks suspiciously close to NUTELLA’s. Ferrero has not only registered NUTELLA as a word mark, but has also registered several distinctive elements, including the label itself, as separate trademarks. Ferrero invokes unfair advantage taken of the reputation of a well known mark. Once reputation comes into play, the test is no longer confined to likelihood of confusion, it is sufficient that the relevant public makes a mental association with the earlier mark. Ferrero easily demonstrates that NUTELLA is a well known mark.
The verbal elements are not particularly similar, but the combination of red and black lettering, the slice of bread, hazelnuts, glass of milk and yellow flower makes the overall impression strikingly close. As the later mark is also filed for foodstuffs, consumers will make the link. The application is rightly refused.
