Kerrygold v Kerrymaid - is the element “kerry” distinctive in the EU?
In this decision the General Court had to decide whether the potentially descriptive meaning of the element “KERRY” (referring to a geographical location in Ireland) and peaceful co-existence in part of the EU would be sufficient to exclude a likelihood of confusion. The General Court said no – at least as long as such descriptive meaning would be understood by only part (and not the majority) of the EU public and co-existence related to only part of the EU.
Kerry Luxembourg Sàrl (Kerry Luxembourg) had filed for the word sign KERRYMAID in classes 29 and 30, including butter and dairy products. Ornua Co-operative Limited (Ornua) opposed the application based on 18 earlier marks composed exclusively or in part of the word “kerrygold” and registered for goods in classes 1, 5, 29, 30, 32 and 33. Grounds of the opposition were likelihood of confusion and that the mark KERRYMAID would be detrimental to and take unfair advantage of the “kerrygold” marks.
At first instance, the opposition division upheld the opposition in its entirety on the basis that KERRYMAID would take unfair advantage of and be detrimental to the repute of the following figurative mark:
Kerry Luxembourg appealed the decision and Ornua brought an infringement action before the Juzgado de lo Mercantil de Alicante (Commercial Court, Alicante, Spain) claiming infringement based on the same relative grounds for offering goods bearing the sign KERRYMAID on the Spanish market. In light of the infringement action, the opposition proceedings were suspended.
Subsequently, the Spanish court dismissed the infringement action arguing that there was no likelihood of confusion since the only similarity between the marks KERRYMAID and “kerrygold” lay in the common element “Kerry”, which refers to the Irish county known for cattle breeding. Furthermore, it had been established that the marks coexisted peacefully in Ireland and the United Kingdom.
This decision was appealed and various questions were referred to the Court of Justice of the European Union (CJEU) in relation to the peaceful co-existence and descriptive meaning of a common element in part only of the territory of the EU (decision of 20 July 2017 in case C‑93/16).
On appeal, the decision of the Juzgado de lo Mercantil de Alicante was upheld.
The suspension of opposition proceedings was then lifted and the Board of Appeal partially annulled the decision of the opposition division. The opposition was upheld only on the basis of likelihood of confusion in relation to most of the class 29 goods.
The decision was appealed by Kerry Luxembourg to the General Court.
The decision of the General Court
The General Court dismissed the appeal and confirmed the decision of the Board of Appeal, explicitly holding that neither the EUIPO nor the General Court are bound by the decision(s) of the Spanish courts.
First, the General Court confirmed that the dominant element in the figurative mark is the verbal element “kerrygold”.
While the element “Kerry”, in relation to dairy products such as butter, milk or cheese, was likely to be understood as a reference to the geographical location of County Kerry, Ireland, by “members of the European public who live in Ireland, who have visited Ireland or, possibly, who live in the United Kingdom, because of its proximity to Ireland”, there was no clear indication that the non-English-speaking public of mainland Europe would understand the term as such. In particular, the General Court held that there was no evidence to support the conclusion that the term “KERRY” was understood by the European public as a whole as a geographical indication.
Furthermore, the General Court confirmed that in lieu of any evidence the contrary, the term “KERRY” had distinctive character in relation to the goods for which the earlier mark was registered – at least for the majority of the EU public.
Aside from that, the General Court held that peaceful co-existence of an EUTM and a national mark in part of the EU (in this case, Ireland and the United Kingdom) would not allow the conclusion that there is no likelihood of confusion in another part of the EU, where peaceful coexistence between that EUTM and the sign identical to that national mark did not exist.
Descriptiveness/non-distinctiveness of a sign (or part of a sign) in only part of the EU does not prevent the finding of distinctiveness/dominance of that sign/part.
Peaceful co-existence in only part of the EU does not prevent the finding of likelihood of confusion.
Case details at a glance
Jurisdiction: European Union
Decision level: General Court
Parties: Kerry Luxembourg Sàrl (applicant) v EUIPO (defendant)
Date: 10 March 2021