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by Gail Schimmel (@GailSchimmel) According to a recent press release from attorneys Adams & Adams, Italian confectionery giant, Ferrero S.p.A., has initiated legal proceedings against local jam producer, Roscherr’s Fine Foods.

Here’s the story:

Ferrero Rocher and Rocher are trademarks, registered in Category 30, covering foodstuffs such as sugar, spices, baking powder, yeast, ice, treacle, honey, cocoa, and chocolate confectionery, to name only some of the goods.

The Ferrero Rocher trademark looks like this:

Ferrero Rocher logo with chocolateFerrero Rocher logoAlong comes one Zelda Roscherr from Montagu in the Western Cape. She makes nice jam, and it has grown into a family-owned business which created a trademark that looks like this:

Roscherr's logoRoscherr’s Fine Food registered this trademark in Class 29, relating to “Jams; preserves; dried fruit; nuts”.

Applied for cancellation

In August this year, Ferrero applied for the cancellation of the Roscherr’s logo trademark. People, it believes, will be confused and think that Roscherr’s jam comes from Ferrero Rocher, makers of chocolate. Um, okay.

Roscherr’s Fine Foods is taking a fighting stance and defending its trademark and launching a counter-application for the partial cancellation of the five registered trademarks relied upon by Ferrero. The basis for the counter-attack is that Ferrero registered its trademarks without the intention of using them in relation to any goods in class 30, other than chocolate confectionery — specifically chocolate pralines — and, in addition, that the trademarks have not been used in relation to any other goods in the last five years, if at all.

The real issue here is, of course, not so much the law and the precedents it will set (interesting as they are to us IP lawyers), but the psychology of the matter.

Topple empire

Does confectionary giant Fererro Rocher really believe that Ms Roscherr from the Western Cape is going to topple its empire with her jam? Does it think that sales of jam will somehow damage sales of chocolate — because, you know, when you’re craving chocolate, you often replace it with jam?

It’s clear that it DOES think that the people of South Africa, while being sophisticated enough to enjoy its chocolate, are not sophisticated enough to distinguish two completely different marks, and will buy the jam thinking that it has something to do with the chocolate.

So the biggest damage that exists here is that Zelda Roscherr and her community-enriching business will make a few bucks extra because of a few, rather inane, people becoming confused.

Small-mindedness, old-fashioned

The legalities are irrelevant — what this case does for me is to display a small-mindedness in big business that is, with respect, old-fashioned. The giant chocolate empire attacking the local jam maker shows a lack of grasp of the modern consumer and the modern market place that is worrying.

I love the story of how Waterstones Books in the UK turned the disaster of locking a customer in its shop for two hours after closing into a highly successful marketing strategy, where lucky consumers were… locked in its shop overnight. That’s the type of out-of-the-box thinking that marketers need to be using in this day of consumer power.

It’s a different situation, but maybe Ferrero Rocher could have made itself the hero of this story, instead of the great towering Goliath threatening an almost inconsequential David.

“Get over yourselves, already,” is what I want to tell them.

 

Gail SchimmelGail Schimmel (@GailSchimmel) is an expert in advertising law. Her text book on the subject, Advertising Law: A Guide to the Code of Advertising Practice, has just been released by Juta. Go to www.clearcopy.co.za for more.

“Motive” is the new by-invitation-only column on MarkLives.com. Contributors are picked by the editors but generally don’t form part of our regular columnist lineup, unless the topic is off-column.

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