Kerry Group has lost a long-running legal row with the owners of the Kerrygold brand over registering the trademark "Kerrymaid" for use on mainland Europe.
A judgment delivered by the Court of Justice of the EU (CJEU) on Wednesday means the Tralee-based food giant is unable to register “Kerrymaid” as a trademark in the EU outside Ireland and Britain.
The ruling represents a victory for one of Kerry's main competitors, Ornua – the commercial cooperative formerly known as the Irish Dairy Board – which owns the rival Kerrygold trademark.
The judgment was given as a result of an appeal by the Kerry Group against a decision of the European Union Intellectual Property Office (EUIPO) in July 2019 to refuse registration of the "Kerrymaid" trademark for dairy products.
The EUIPO’s ruling had been supported by Ornua, which holds 18 national and EU trademarks for “Kerrygold”.
Awarding costs against Kerry group, the CJEU ruled that the EUIPO was correct to find that there was a likelihood of confusion on the part of non-English-speaking consumers in the EU between the two trademarks.
Kerry first applied to have “Kerrymaid” registered as a trademark for cheese and other dairy products as well as snack foods and sandwiches in June 2011.
Lawyers for Kerry acknowledged that the Kerrygold trademark has a reputation in Ireland for butter, but claimed there is not sufficient proof of reputation for any product outside of Ireland.
The group claimed any similarity between the two marks was “at most, low”, while claiming Kerrygold did not have a strong distinctive character.
It claimed Ornua’s challenge is based on reputation in Ireland where the general public had long distinguished between the respective brands which had coexisted peacefully since 1990.
Geographical provenance
It claimed use of the word “Kerry” was a statement of geographical provenance referring to a county that was well known to visitors from all over the world.
The group said Kerrygold evoked the idea of a high-quality, precious product, while Kerrymaid evoked the idea of a product produced by a female domestic servant.
Kerry claimed Ornua’s reasoning that it enjoyed an unfair advantage because of the common Kerry name between the two trademarks was flawed.
It maintained it had clearly demonstrated its entitlement to use “Kerry” by virtue of the geographical signification of the word and its extensive use as part of its corporate identity.
It claimed the EUIPO’s ruling effectively granted Ornua exclusivity on all marks prefixed by the word “Kerry”.
However, Ornua claimed the Kerrygold brand has a high recognition in countries such as Germany, which was proof of its reputation outside Ireland.
It claimed no evidence had been provided that the word Kerry was understood by the European consumer as a geographical name as it could also be a first name or family name.
Ornua claimed the entry of a similar brand for identical and similar goods on the European market was bound to cause confusion and lead consumers to think the two products were related.
Lawyers for Ornua argued the use of a very similar mark to Kerrygold after it had been used for half a century in Europe would result in “a blurring” of the brand.
Commercial spat
The latest ruling is part of a long-running commercial spat between the rival dairy companies.
The appeal by Kerry to the EUIPO was suspended in 2014 after a commercial court in Spain dismissed an objection by Ornua against registering “Kerrymaid” as a trademark.
However, the CJEU ruled in 2017 that the fact that the two brands had been sold alongside each other in peaceful co-existence in one country did not mean that confusion would not arise in another EU member state.
The ruling formed the basis for the EUIPO’s decision which was the subject of the latest appeal by Kerry Group.
Kerrygold is regarded as Ireland’s most successful food brand with annual sales globally exceeding €1 billion.
According to Ornua, 8.6 million packets of Kerrygold butter are sold every week in 110 different countries.
