On 28 June 2011, Kerry Luxembourg Sàrl (“Kerry”) filed the EU trade mark application KERRYMAID (word) for different goods in classes 29 and 30. The Irish company Ornua Co-operative Ltd. (“Ornua”) filed opposition based on 18 earlier marks composed of the sign KERRYGOLD and registered in Classes 1, 5, 29, 30, 32 and 33, invoking Articles 8(1)(b), 8(4) and 8(5) EUTMR.

The Opposition Division upheld the opposition, based on the provisions of Article 8(5) EUTMR, and on the basis of the following trade mark:

kerrygold, logo, vaca, pastar

In December 2013, the applicant lodged an appeal against the Opposition Division’s decision. However, the proceedings before the EUIPO were suspended in light of the infringement action brought before the Spanish courts by Ornua concerning the sale of goods bearing the mark KERRYMAID.

In July 2019, the Board of Appeal ruled on Kerry’s appeal, partially annulling the Opposition Division’s decision and upholding the opposition filed by Ornua on the basis of Article 8(1)(b) EUTMR in respect of all the goods covered by the trade mark applied for, with the exception of “meat, fish, poultry and game” and “preserved, dried and cooked fruits and vegetables” in Class 29. The Board of Appeal concluded that the signs in conflict were similar to an average degree and, therefore, there was a likelihood of confusion in relation to the goods in classes 30 and 29 that were identical or similar to the goods covered by the earlier mark. Moreover, the Board of Appeal held that the peaceful coexistence of the signs in conflict in Ireland and the United Kingdom did not permit the conclusion that there was no likelihood of confusion for the part of the relevant public that is unaware of the geographical reference contained in the term “kerry”.

Kerry’s appeal before the General Court is based on a single plea in law: the alleged infringement of Article 8(1)(b) EUTMR in the Board of Appeal’s decision. Kerry argues that the Board of Appeal erred in concluding that there was a likelihood of confusion between the marks in conflict and it disputes the findings of the Board of Appeal regarding the relevant public’s perception of the geographical name “kerry”, the distinctive character of the earlier mark and the similarity of the signs in conflict.

In its judgment dated 10 March 2021 (T‑693/19), the General Court dismisses Kerry’s appeal and upholds the decision by the EUIPO’s Board of Appeal based on the following findings:

  • Kerry did not put forward any evidence that might call into question the Board of Appeal’s finding that there was no clear indication that the non-English speaking public of mainland Europe would understand the term “kerry” as a geographical indication of the designated goods.
  • Kerry did not furnish any evidence that might call into question the Board of Appeal’s finding that, for the majority of the relevant public, with the exception of the Irish public and possibly the public of the United Kingdom, the term “kerry” included in the earlier mark had distinctive character in relation to the goods for which the mark was registered.
  • Even if it could be considered that the relevant public as a whole would perceive the term “kerry” as a geographical indication when used in relation to the goods covered by the earlier mark, the Board of Appeal’s finding that the word element “kerrygold” is the dominant element of the earlier mark would not be called into question, given that, contrary to Kerry’s contention, said finding was not based solely on the presence of the term “kerry” in the word element “kerrygold” but on the position and size of said element and the lack of distinctive character of the figurative elements of the earlier mark.
  • The Board of Appeal did not err in not considering the figurative elements of the earlier mark to be the dominant and distinctive elements of that mark, given that, as held by the Board of Appeal, the representation of a grazing cow that features in the earlier mark, in relation to milk products, will be perceived by consumers as an element that is descriptive of the nature of the designated goods, and the other figurative elements of the sign (the flowers, the green background, the white lines and the font used) will be perceived as purely decorative elements that cannot convey any message that can be remembered by consumers.
  • The signs at issue are visually and phonetically similar to an average degree due to the common element “kerry”, placed in the first part of the word elements of the signs. Therefore, the Board of Appeal rightly concluded that, even though the signs in dispute are not conceptually similar, they are similar overall.
  • In light of the foregoing, the Board of Appeal rightly concluded that, in the global assessment of the likelihood of confusion, in the case at hand, with regard to the goods covered by the mark applied for which are similar or identical to the goods in Class 29 covered by the earlier mark, there may be a likelihood of confusion for the part of the relevant public which is not aware of the geographical reference contained in the term “kerry” and which corresponds to a large part of the relevant public.

In relation to the objections raised by Kerry concerning the Board of Appeal’s analysis of the likelihood of confusion, the General Court holds as follows:

  • The examination of the likelihood of confusion carried out by the EUIPO necessarily entails an abstract assessment, which is based not on the circumstances in which the goods are marketed, but on the “objective” arrangements for the marketing of the goods covered by the marks in conflict and, therefore, the way in which the earlier mark is used is irrelevant for the purposes of analysing the likelihood of confusion and the Board of Appeal was not obliged to take into consideration the evidence invoked by Kerry.
  • In any case, even if taking that evidence into consideration would have enabled the Board of Appeal to conclude that the term “kerry” had Irish connotations for the relevant public, mere connotations cannot suffice to determine that the relevant public as a whole perceives the term “kerry” as a geographical indication when it is used in relation to the goods covered by the earlier mark, given that to make that determination it would be necessary for there to be a sufficiently direct and specific link between the sign and the goods to enable the relevant public to immediately perceive, without further thought, a description of the goods in question or of one of their characteristics.
  • The judgment by the Court of Justice of 7 January 2004, Gerolsteiner Brunnen (C-100/02, EU:C:2004:11), invoked by Kerry, is not applicable to the case at hand, given that on reading the judgment, it does not appear that the Court of Justice examined whether the term “kerry”, associated with the goods in question, would be understood by the relevant public as an indication of their geographical origin.
  • The Board of Appeal did not err in disregarding the judgments of the Provincial Appellate Court of Alicante and the EU Trade Mark Court issued in the infringement proceedings brought by Ornua, given that the EUIPO is not bound by the decisions of an EU trade mark court delivered in actions for infringement, in the context of the exercise of its exclusive jurisdiction over registration of EU trade marks and, in particular, when, in so doing, it examines oppositions filed against applications to register EU trade marks.
  • With regard to the alleged peaceful coexistence of the marks at issue, contrary to Kerry’s claims, the burden of proof lies with the party claiming that there is peaceful coexistence and, moreover, when the opposition to the registration of an EU trade mark is based on an earlier EU trade mark, the coexistence must be proved for the entire territory of the European Union.

In light of the above, the General Court concludes that the Board of Appeal correctly held that there was a likelihood of confusion on the part of the non-English speaking part of the relevant public between the mark applied for and the earlier mark, within the meaning of Article 8(1)(b) EUTMR, in relation to the goods at issue.

Author: Ana Sanz

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