When a certain celebrity chef named a dessert in an exclusive London restaurant menu after a famous Wall’s ice cream sub-brand, he got a rocket from ‘m’learned friends’ at Unilever. For the fate of the puds’ fun moniker go to
Who: Unilever and Gordon Ramsey
Where: The Boxwood Café in the Berkeley Hotel, Knightsbridge
When: August 2004
The Guardian reported Unilever claims after Michelin-starred Chef Gordon Ramsey created a new summer dessert for his Boxwood Café in the Berkeley Hotel, Knightsbridge. The pudding consisted of 3 small ice-creams, fresh mint chocolate, strawberry and banana bread flavour, on a silver stand. So far so tasty, but things went wrong when he decided to christen the dessert 'mini cornettos'.
Unilever, owner of the 'Cornetto' brand was not best pleased. It said the brand was its registered trademark and in a lawyer's letter to the establishment, threatened an application to the court for an immediate injunction, damages or an account of profits and costs unless use of the 'mini cornettos' moniker was dropped forthwith.
Damages claim pursued?
The Berkeley Hotel duly apologised and agreed to drop the name from their menu and their website. It is not clear whether Unilever, despite the Hotel's apology and agreement to drop the pud name, are still intent on suing for damages or loss of profits in respect of the establishment's use up to that point of the Cornetto brand.
Apparently up to the name being dropped, orders for mini cornettos were running at 150 a week. Damages or an account of profits would probably have been Unilever's right, but one suspects they would probably have been happy with the apology and withdrawal and perhaps a payment in respect of costs at most.
Why this matters:
The case underlines that a trademark registration is a monopoly right. A quick online check of the UK Trademark Register reveals that Unilever has no less than 15 entries on the register of marks incorporating the word 'Cornetto', with the original 'Cornetto' registration for ice-cream and ice-cream confections dating back to 1983.
'Cornetto' is also a Unilever-owned registered Community Trademark, valid across all 25 European Member States.
"Generic use" risk
One of the factors that drove the forceful action by Unilever's lawyers was no doubt a concern that unless this sort of usage was nipped in the bud, the 'Cornetto' brand might cease to be distinctive of products coming from Wall's/Unilever and become merely generic.
Brands that lose their distinctiveness of particular manufacturers and become merely descriptive of a particular product type risk loss of their registered trademark status and a consequent collapse in their value.
Unilever would not want 'Cornetto' to go the same way as 'Escalator' for example and in order to do this will need to take rapid and forceful action against even the most modest use of its brands. Similar tactics are deployed by the owners of the 'Sellotape' and 'Hoover' brands for example, for similar reasons.