2011 years 6 month 28 day, Kerry Luxembourg Sàrl (Hereinafter referred to as "Kerry" ) Apply for EU word trademark registration "KERRYMAID" , Designated control 29 Class sum control 30 Class goods. Irish company Ornua Co-operative Ltd. (Hereinafter referred to as "Ornua" ) basis "Eu trade mark regulation" The first 8 (1) (b) article, The first 8 (4) Articles and regulations 8 (5) Article and other provisions, quote 18 An earlier registered trademark "KERRYGOLD" (Designated control 1, 5, 29, 30, 32 and 33 Class goods) , Raise an objection.

　　Dissenting party "Eu trade mark regulation" The first 8 (5) article, And quote trademarks (As shown in the picture below) , Hold the objection.

　　2013 years 12 month, The applicant for the disputed trademark disagrees with the ruling, Lodge an appeal. however, Due to the Ornua Label for sale "KERRYMAID" Has taken legal proceedings to the Spanish courts on the grounds of infringement of goods (See our previous review " [Eu trademark] Factors determining whether a disputed trademark is at risk of confusion (C-93/16) " ) , The EU Intellectual Property Office's appeal process was suspended.

　　2019 years 7 month, The Appeal Board quashed some of the conclusions of the Division, But agree Ornua In accordance with the "Eu trade mark regulation" The first 8 (1) (b) Article on grounds of objection, Resolved to dismiss the disputed trademark application except No 29 class "meat, fish, Poultry and game" and "pickling, Dried and cooked fruits and vegetables" Etc. All other goods other than the goods item. In the opinion of the Appeal Board, The trademarks in dispute are similar to each other, Therefore, in the same or similar to the goods covered by the preceding mark 29 Class sum control 30 Class related goods, There is a risk of confusion and misidentification. In addition, In the opinion of the Appeal Board, Based solely on the fact that the trademarks in question coexist peacefully in the Irish and British territories, Insufficient to establish, For do not know "Kerry" The word contains the geographical meaning associated with the public, There is no confusion or misidentification.

　　Kerry Against the decision of the appeal Board, Appeal to the general Court, The reason is that: The appeal board's finding is contrary "Eu trade mark regulation" The first 8 (1) (b) Provision of article. Kerry Think that, The Appeal Board erred in its conclusion that the contested marks constituted similarities, And to the relevant public on the geographical name "Kerry" understanding, Significant distinction of the prior trademark, And the similarity between the symbols in question.

　　2021 years 3 month 10 day, The general court ruled No T-693/19 Number judgment, reject Kerry appeal, The decision of the Appeal Committee of the European Intellectual Property Office was upheld, The reasons are as follows:

　　- Kerry No evidence was provided, To certify the appeal board "There's no clear evidence for that, The EU-related public in non-native English speaking countries can understand 'Kerry' The word indicates the geographical location of a commodity" The verdict was wrong.

　　- Kerry Failed to provide evidence to support it, It challenged the appeals board's "For most of the concerned public, with the exception of Ireland and the UK, Included in the prior trademark 'Kerry' element, In the trademark designated use of goods with significant distinction" A false claim.

　　- Even if the relevant public might understand "Kerry" The term is used for items of goods designated by the preceding trademark, It represents a specific geographical location, But with Kerry To the contrary, The Appeal Board found the literal element "Kerrygold" The main elements that constitute the prior trademark, Not just based on "Kerry" In word "Kerrygold" Position in, It takes into account the position and size of the text, As well as the lack of significant differences in the graphic factors of the prior trademarks, So the conclusion is correct.

　　- The Board found that the graphic element of the prior mark was not the primary and distinguishing element of the mark, Be right. As noted by the Appeals Board, In the prior trademark "A cow grazing" pattern, When used in milk products, Consumers will interpret it as a decorative element of the goods specified in the trademark, Other graphic elements of the logo (flowers, Green background, White lines and fonts) Would be understood as purely decorative elements, It doesn't convey anything that will stick with the consumer.

　　- Trademarks in dispute all contain elements "Kerry" , And they all appear at the beginning, Therefore, the disputed mark is visually and phonetically similar to the prior trademark, Although not similar in meaning, The two trademarks are still similar overall. The appeal board was right in its conclusion.

　　- Based on the above analysis, Can identify, When assessing the risk of confusion as a whole in this case, The disputed trademark application specifies the goods item and the first covered by the prior trademark 29 The same or similar commodity items, For do not know "Kerry" Elements have a geographical meaning to the relevant public, There is a risk of confusion and misidentification. The appeal Board was correct in its decision.

　　As to Kerry Challenge the appellate Board's analysis of confusion and misidentification, General court decision:

　　- The confusion risk analysis of the EU Intellectual Property Office inevitably requires abstract assessment, Is not based solely on what is actually sold in the marketplace, There is also controversy to consider "objective" Items of branded goods ready for sale, Therefore, The way the prior trademark is used has nothing to do with the risk of confusion assessment, Nor is the appeal Board obliged to consider it Kerry The relevant evidence submitted.

　　- In any case, Even if the appellate panel considers the evidence, Determine that the relevant public is likely to "Kerry" The word is associated with Ireland, But it's only possible to make a connection, Not enough to prove that "Kerry" When used in the items of goods designated by the prior trademark, It is understood by the relevant public to indicate a specific geographical location, Because that's the conclusion, There needs to be proof that there is an adequate direct and specific link between the mark and the goods, The public concerned need think no further, Be able to understand "Kerry" Is a description of the goods in question or their specific nature.

　　- Kerry Cited in the petition for appeal, 2004 years 1 month 7 The European Court of Justice of Japan vs Gerolsteiner Brunnen Judgment of the case (Case number: C-100/02, EU: C: 2004: 11) , Does not apply to the circumstances of this case, Because the European Court of Justice did not analyse it in its ruling, "Kerry" The element is used on the item in question, Is understood by the relevant public to indicate the geographical origin of the commodity.

　　- The EU Intellectual Property Office has exclusive jurisdiction over trademark registration procedures in the EU, When reviewing an objection to an application for a registered trademark in the European Union, It is not bound by the judgment of the Trademark Court of the European Union. Therefore, The Appeal Board need not refer to the Court of Appeal of the Province of Alicante and the Trademark Court of the European Union vs Ornua The conclusion of a trademark infringement action.

　　- As for disputed trademarks, they can coexist peacefully, with Kerry To the contrary, The burden of proof is on the party making the claim, and, The fundamental right to object to an application for a trademark registered in the EU is when the trademark is in the EU, The existence of coexistence throughout the EU should be demonstrated.

　　Therefore, The General Court upheld the appeal board basis "Eu trade mark regulation" The first 8 (1) (b) Article made the conclusion, For the concerned public in non-native English speaking countries, On the item in question, There is a risk of confusion and misidentification between the disputed trademark application and the prior trademark.

　　compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights