New York Court dismisses Kerrygold's trademark claim against Tipperary butter
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Kerrygold versus Tipperary sounds like a GAA match-up, but this recent contest in New York was all about butter.
And Tipperary came out on top.
A New York Court has ruled that the packages of Kerrygold and Tipperary unsalted Irish butter products are not likely to be confused by consumers. In reaching this conclusion, the court dismissed Kerrygold’s claims for trade dress infringement (a US law concept, similar to passing off in Ireland, which is a misrepresentation by a business to prospective customers which is calculated to or foreseeably injures the goodwill of another and cause damage to that other business).
The court also dismissed Kerrygold’s claims for unfair competition and deceptive business practices.
Ornua Foods North America, Inc. and Ornua Co-operative Limited, produce and sell Kerrygold unsalted Irish butter in various territories, including the US. Ornua claimed that Kerrygold unsalted butter has been sold since 2004 using a trade mark registered in the US in March 2022 (following a US trade mark application in 2020).
Between 2018 and 2022, Ornua claimed to have spent over $226 million on advertisements in North America related to the Kerrygold brand. Consequently, since 2018, sales of this trade-marked Kerrygold unsalted butter account for more than 30% of the US market for unsalted premium butter products.
Ornua also argued that sales of Kerrygold unsalted butter in the US grew from $30.9m (€28.6m) in 2018 to $68.6m (€63.5m) in 2022.
Abbey Specialty Foods LLC (a company based in the state of New Jersey) began selling an unsalted Irish butter, trademarked Tipperary, in the US in February 2021. Kerrygold and Tipperary unsalted butters are often sold in the same retail stores in the US.
Abbey’s owner also acknowledged that, as of December 2023, he had been aware of the Kerrygold product, as depicted in the Kerrygold registered mark, for more than 10 years.
Ornua initiated legal proceedings in New York in February 2024. claiming, amongst other things, trade mark infringement, trade dress infringement, unfair competition, and deceptive business practices. In response, Abbey filed a motion to dismiss Ornua’s claim and for the court to make a final decision without a full trial.
The New York Court held that the Kerrygold packaging is inherently distinctive and non-functional and that a likelihood of confusion does not exist between the Kerrygold and Tipperary packaging and trade dresses. In particular, the court said a reasonable jury could not find that a likelihood of confusion exists, because the overall impressions created by both differ meaningfully, even though the competing product packages do share certain features.
According to the court ruling, each package prominently displays the brand name. The name “Kerrygold” assumes a significant portion of the Kerrygold product and is in the centre of the package.
The court noted that “these brand names clearly signal the products’ different sources and go far towards eliminating any possible confusion”. Although both products use a Celtic-style font, each font is evidently distinct.
The two packages contain different phrases and otherwise arrange any similar phrases in different places. By way of example, the Tipperary package states “Imported from Ireland”. No such statement appears on the Kerrygold package.
The focal point of the Kerrygold package is the green quadrangle with the “Kerrygold” brand name and depiction of a cow grazing tufts of grass. On the other hand, the focal point of the other package is the name “Tipperary” which sits against the silver foil, and the Irish national flag.
Many of the features which Ornua argued would cause confusion are common to other butter products. On this point, the court commented that even a cursory glance at the collection of butter packages Ornua assembled in its statement of material facts reveals that butter products commonly share the same size, shape and weight.
The American court ruling contrasts sharply with a 2021 legal victory in the EU for the “Kerrygold” brand, and its owner Ornua (formerly known as the Irish Dairy Board).
That legal battle started in 2011, when Kerry Group applied to have “Kerrymaid” registered as a European Union Trade Mark (EUTM) for cheese, butter, dairy products, snack foods, sandwiches and other goods. The application was opposed by Ornua, defending its 18 earlier registered trademarks for “Kerrygold” for the same goods.
Ornua's opposition was upheld by the European Union Intellectual Property Office (EUIPO). Kerry Group appealed the EUIPO Opposition Division decision, and that appeal was dismissed by the EUIPO Fifth Board of Appeal, which found that the competing trade marks overall had an average degree of visual and phonetic similarity, and there was a likelihood of confusion over the butter products concerned.
The Fifth Board of Appeal also held that the peaceful co-existence of the two marks in Ireland and the UK did not mean that there would not be a likelihood of confusion for the public in the EU, who would be unaware of the geographical reference contained in the term “Kerry”.
In a further appeal to the European Court, Kerry Group argued that similarity between the two marks was “at most, low,” and that “Kerrygold” did not have a strong distinctive character. It suggested that the term “Kerrygold” associated with butter and dairy products would be perceived by the relevant public as an indication of their geographical origin and should therefore not be registerable.
Kerry Group argued that Kerry is a well-known destination for European travelers, and traditionally one of Ireland’s premier tourist destinations. Moreover, it argued that the two brands at issue had co-existed peacefully in Ireland and the UK since 1990, without any difficulties or confusion arising.
However, the European Court said no evidence was provided to prove that the term “Kerry” would be understood by members of the European public who do not live in Ireland or who have never visited Ireland. By way of example, it said that the word “Kerry” could also be a first name or a family name.
In addition, the European Court found that both trade marks were visually and phonetically similar to an average degree and there may be a likelihood of confusion among the public which is not aware of the geographical reference contained in the word “Kerry”, which represents a large part of the relevant public in the EU.
The court commented that the use of the common element in both signs, ‘Kerry’, could lead consumers to think that the “Kerrymaid” mark was an additional version of the earlier “Kerrygold” mark. The court awarded costs against Kerry Group and ruled that the EUIPO was correct to find a likelihood of confusion between the two trademarks on the part of non-English-speaking consumers in the EU.
The two brands continue to co-exist in Ireland and the UK, but Kerry Group is unable to register “Kerrymaid” as a trademark in the EU outside Ireland and Britain.
Ornua is Ireland’s largest exporter of Irish dairy products. It describes its Kerrygold Park production facility at Mitchelstown, Co Cork, as "the global home of Kerrygold", with capacity to produce one million retail packs of butter per day.
In 2023, Ornua delivered brand premium and bonuses to its member co-operatives and their 14,000 Irish dairy farming families, totalling €74.5 million.
