Origins of the dispute
The CJEU has ruled against Kerry Group in a long-running legal dispute with Ornua over registering the trade mark ‘Kerrymaid’ as a European Union trademark (EUTM).
Kerry Group’s application in 2011 for an EUTM for ‘Kerrymaid’ word-mark in Classes 29 and 30 (including for dairy spreads and butter) (Application) was opposed by Ornua, formerly the Irish Dairy Board, on the grounds that 18 of Ornua’s national trademarks and EUTM, comprising or containing the word ‘kerrygold’, are registered in Classes 29 and 30. Ornua’s opposition was upheld on the basis of an earlier figurative mark which was registered in Class 29:
(the “Earlier Mark“).
Kerry Group appealed to the EUIPO Board of Appeal. However, its appeal was subsequently suspended in 2014, following a decision by the Spanish Commercial Court dismissing an infringement action by Ornua in relation to use of the ‘Kerrymaid’ mark on the Spanish market. That Spanish decision was ultimately upheld on appeal following the referral of a number of questions to the CJEU, including in relation to the peaceful coexistence of marks in certain Member States.
By 2019 the EUTM matter had made its way to the Fifth Board of Appeal (Board) who partially annulled a decision of the EUIPO Opposition Division, upholding Ornua’s opposition and rejecting the application to register the ‘Kerrymaid’ mark, on the basis of the Earlier Mark.
Kerry Group then appealed to the CJEU and argued that the Board erred in concluding that there was a likelihood of confusion, and more specifically disputed the findings in relation to the relevant public’s perception of the geographical name ‘Kerry’, the distinctive character of the Earlier Mark and the similarity of the ‘Kerrygold’ and ‘Kerrymaid’ signs (Signs).
‘Kerrygold’ figurative mark v ‘Kerrymaid’ word mark
The CJEU highlighted that the average consumer normally perceives a mark as a whole and so assessment of the similarity means more than looking at just one component of the mark.
- Dominant and Distinctive Elements
Kerry Group argued that:
- ‘Kerry’ was not distinctive but descriptive; and
- the relevant public would perceive it as the geographical origin of the goods.The Board found that ‘Kerry’ was likely to be understood as a reference to the geographical location of County Kerry but only to those living in Ireland or possibly the UK. Therefore, there was no clear indication that the non-English speaking public of mainland Europe would perceive the term ‘Kerry’ as a geographical location in Ireland. The CJEU upheld this finding, notably concluding that the mere fact that County Kerry had a detectable presence on the internet and was a region with rich political and cultural heritage, was not sufficient to establish that it would be known by a significant part of the relevant public.
Kerry Group also argued that it was the figurative elements of the Earlier Mark that should be regarded as the dominant and distinctive elements, not the word element, as it argued the term ‘Kerry’ is descriptive. The CJEU also dismissed these claims, commenting that word-marks are in principle more distinctive because the relevant public will refer to the goods in question by quoting their name rather than by describing the figurative elements of the mark.
- Visual Similarity
The Board held that there was an average degree of visual similarity between the Signs: on account of the common presence of ‘Kerry’, and the last letter ‘d’. The CJEU upheld this, finding that despite the variation in ‘gold’ and ‘maid’ and the figurative elements in the Earlier Mark, the common term ‘Kerry’ conferred an average degree of visual similarity.
- Phonetic Similarity
Kerry Group also argued that there was a very low degree of phonetic similarity between the marks. The CJEU dismissed this claim, endorsing the Board’s view that the consumer’s attention would be focused primarily on the beginning of the Signs, and so they were phonetically similar to an average degree.
- Conceptual Similarity
There was no dispute as to the Board’s finding of a lack of conceptual similarity. Endorsing this, the CJEU highlighted that ‘gold’ was indicative to the public of the high quality of the good, and ‘maid’ would be understood to mean ‘female servant’, two very different concepts.
In light of the above, the CJEU found the Signs to be similar overall.
The Global Assessment
With the exception of ‘meat, fish, poultry and game’ and ‘preserved, dried and cooked fruits and vegetables’, the CJEU noted that all the goods covered by ‘Kerrymaid’ were similar or identical to the goods in Class 29 covered by the Earlier Mark.
In assessing the likelihood of confusion between the marks across Europe, the CJEU upheld the Board’s finding that peaceful coexistence of the marks in Ireland and the UK did not allow for the conclusion that there was no likelihood of confusion.
With regard to the global assessment, Kerry Group argued that the Board had erred in:
- disregarding the evidence submitted by Ornua as to how the Earlier Mark was used. It claimed that evidence showed that ‘Kerrygold’ was heavily promoted as an Irish product, and as a result the relevant public was likely to regard the term ‘Kerry’, as having Irish connotations;
- disregarding the earlier judgment of the Provincial Court of Alicante, Spain which found in Kerry Groups favour; and
- ruling out peaceful coexistence for the other countries of the EU without valid reason or explanation. It argued that the burden rested on Ornua to show the conditions or sociocultural circumstances in the EU were different from those in Ireland the UK.
In rejecting these claims, the CJEU held that:
- mere connotations do not suffice to establish that the relevant public as a whole perceived ‘Kerry’ as a geographical indication;
- Regulation No 207/2009 does not bind EUIPO to a decision by an EU trade mark court delivered in an infringement action; and
- the burden of proof lies with the party claiming the existence of peaceful coexistence, and such coexistence must be proven for the entire territory of the EU.
The CJEU ultimately rejected Kerry Group’s arguments as unfounded and, consequently dismissed the Application, ordering costs against Kerry Group. This marks the end, for now at least, of a long-running legal row between rivals Kerry Group and Ornua.
Contributed by Louise Murray