Kerrygold v. Kerrymaid – a long-standing trademark dispute over the well-known trademarks for butter and margarine was decided before the ECJ. Kerrygold won the case on likelihood of confusion before the CJEU – “Kerry” is not understood as a geographical origin of the goods in the EU outside UK / Ireland, the court ruled.
Long lasting legal dispute over Kerry brands
The parties to the dispute are manufacturers of butter and margarine and both known by well-known trademarks Kerrygold and Kerrymaid.
The plaintiff is Kerry Luxembourg Sàrl (Luxembourg), the former “Kerry Group,” which registered the word mark KERRYMAID as a Union word mark in June 2011. Also playing a role is T&S, a company under Spanish law, which imports margarine into Spain under the KERRYMAID sign and distributes it there. This margarine is produced in Ireland by the Kerry Group.
The lawsuit is against the Irish food company Ornua Co-operative Ltd, which distributes butter and other dairy products. Its best-known product is marketed under the name Kerrygold, which is registered for numerous goods in Nice Classes 1, 5, 29, 30, 32 and 33, including the European word and figurative mark KERRYGOLD in Nice Class 29, registered since March 2011.
Board of Appeal: Likelihood of confusion with the earlier mark Kerrygold
The two parties have been in dispute for years over butter and margarine under the trademarks Kerrygold and Kerrymaid. Plaintiff Ornua claims that the Kerrymaid mark leads to likelihood of confusion with the earlier mark Kerrygold, and therefore filed an opposition against the trademark registration of the Union word mark KERRYMAID.
In 2013, the opposition was upheld, but applicant Kerry Group filed an appeal. Ornua then brought a trademark infringement action against Kerry Group concerning the sale of goods bearing the KERRYMAID mark in the Spanish market. This infringement action led all the way to the highest European court (ECJ, EU:C:2017:571) on the issue of peaceful coexistence of the marks. Ultimately, the infringement action was subsequently dismissed by the Spanish court.
However, Ornua was successful with the opposition against the trademark registration on the grounds of likelihood of confusion before the Board of Appeal, which largely upheld it. The former Kerry Group appealed against this decision on the likelihood of confusion before the European Court of Justice (ECJ), which has now ruled on the matter.
The plaintiff essentially claims that the Board of Appeal was wrong to conclude that there was a likelihood of confusion in the present case. It focused its pleas primarily against the Board of Appeal’s findings on the relevant public’s perception of the designation ‘Kerry’:
Kerry is perceived as a geographical name, moreover, the graphic representation of the earlier mark Kerrygold shows a cow in a green field and ‘Kerrygold’ is also advertised as an Irish product: As a result of this association with Ireland, the relevant public would perceive the term ‘Kerry’ contained in the earlier mark as having Irish connotations. “‘Kerrygold’ is descriptive and devoid of any distinctive character and, above all, of any similarity with KERRYMAID. The Board of Appeal was therefore wrong to conclude that there was a likelihood of confusion in the present case.
“Kerry” – a geographical indication for butter and margarine?
The applicant claimed that the term “Kerry” would be perceived by the relevant public as an indication of the geographical origin of the goods. It was therefore neither dominant nor distinctive.
The registration of geographical names is very popular from a marketing point of view. However, for well-known geographical places that are already famous for certain goods and services, registration is not possible for these goods and services. Likewise, companies are not allowed to protect geographical locations for themselves as an “indication of origin”, this was also decided in the St. Andrews case, among others.
In positive terms, this means that registration of geographical names may well be possible – if these geographical names are not assumed by consumers to be the origin of the relevant category of goods or services. It is also possible that a sign that is devoid of distinctive character in one member state or is not descriptive of the goods or services in question is devoid of distinctive character in another member state, the ECJ added.
How well known is “Kerry” to citizens in the EU?
The applicant argued that Kerry is a well-known destination among European travelers and has traditionally been one of Ireland’s top tourist destinations – but to no avail.
This is because the figures presented refer to those who have already visited the Kerry region in Ireland – but this is a very small and negligible part of the relevant traffic with regard to the European Union as a whole.
Kerrygold is the dominant element
But even if the evidence had proven “Kerry” as the geographical origin, the claim would have to be rejected, the ECJ added. This is because the word element “Kerrygold” is the dominant element of the earlier mark. And the compound term “Kerrygold”, taken as a whole, had no relevant meaning for a large part of the relevant public in the European Union, thus conferring an average distinctive character on the earlier mark.
Descriptive elements in the Kerrygold mark
Although the representation of the cows on green pasture is certainly to be seen as descriptive, it is only a matter of decorative elements. The less stylized representation could not convey a message that could be remembered by consumers, and was therefore not distinctive, the ECJ ruled.
Descriptive elements of a mark are, moreover, generally considered to have only a very low degree of distinctiveness, although they must be taken into account for the overall impression of the mark.
Medium similarity due to the common term KERRY
As regards similarity, it must be stated that the common term ‘Kerry’ confers on the signs in question an average degree of visual and figurative similarity.
Therefore, in conclusion, the CFI held that there may be a likelihood of confusion for that part of the relevant public which is not aware of the geographical reference contained in the word “Kerry” and which corresponds to a large part of the relevant public. The Board of Appeal also held that this was the case.
The action was therefore dismissed in its entirety.
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