[Editor's note] Ireland Ornua The company has several EU registered trademarks "KERRYGOLD" , Designated for use on products such as butter and dairy products, Sold in Spain and several other European Union countries. Kerry Group plc. The company is "KERRYMAID" Brand margarine maker, Trademarked in Ireland and the United Kingdom "KERRYMAID" . trademark "KERRYGOLD" with "KERRYMAID" What sparks will come out? Look down together!

[background] Ireland Ornua The company has several EU registered trademarks "KERRYGOLD" (As shown in Figure 1) , Designated for use on products such as butter and dairy products, Sold in Spain and several other European Union countries. Figure 1 Tindale&Stanton company (Hereinafter referred to as "T&S" ) Imported and sold in Spain "KERRYMAID" card (As shown in Figure 2) Margarine commodity. Figure 2 Kerry Group plc. company (Hereinafter referred to as "Kerry" ) is "KERRYMAID" Brand margarine maker, Trademarked in Ireland and the United Kingdom "KERRYMAID" . "KERRYGOLD" and "KERRYMAID" Signage has co-existed in Ireland and the UK for more than two decades.

2014 years, Ornua A complaint was filed with the Commercial Court of Alicante, Claim basis "Community trade marks Ordinance (The first (EC) 207/2009 No) " The first 9. 1. b) and c) Provision of article, judgment T&S Infringed its EU trademark rights. The Commercial court of Alicante dismissed the plaintiff's claim, The reason is the national trademark "KERRYMAID" Eu trade mark "KERRYGOLD" Similar part of "KERRY" Descriptive language, A village in Ireland known for its dairy farming. In addition, Due to national trademark "KERRYMAID" Eu trade mark "KERRYGOLD" In Ireland and the UK for many years, However, the EU trademark is single (unitary character) characteristic, Therefore, the court found that there was no risk of confusion or improper exploitation of the plaintiff's trademark reputation in Spain. Ornua Appeal to the Court of Appeal in Alicante, Asked the Spanish court to take the case to the European Court of Justice (Court of Justice) confirm, In the circumstances of this case, How to understand "Community trade marks Ordinance (The first (EC) 207/2009 No) " The first 9. 1. b) and c) Provision of article.

The Court of Appeal of Alicante granted the appellant's request, Decided to stay the appeal proceedings, And request the European Court of Justice to make a preliminary ruling on the following issues: -Can it be based on the fact that an EU trademark and a national trademark of an EU Member State coexist peacefully in that country, It is determined that there is also no risk of confusion in the territory of the other EU Member State in question? -To determine whether there is a risk of confusion, Whether the European Court of Justice should fully assess all relevant elements of a particular case, In particular, the geography of EU member states where coexistence exists, population, Economic and other factors, The fact that the contested mark co-exists in some EU countries also holds true in other EU countries? and, -This case is about the peaceful coexistence of EU trademarks and national trademarks in parts of the EU, Whether it constitutes fair use within the EU area in dispute (legitimising use) Justification for a mark identical to that country's trademark (due cause) ?

[conclusion] The European Court of Justice said yes to the first question of the Alicante court of Appeal, And clarify: - "Community trade marks Ordinance (The first (EC) 207/2009 No) " The first 9. 1 The monopoly rights granted to the trademark owner shall, in principle, cover the whole area of the European Union; -In order to ensure that the EU trademark owner can realize the above monopoly rights, There is no need to prove that there is a risk of confusion in all areas of the EU by using a mark identical or similar to the EU mark; and, -Use the same or similar identity, Even if it creates a risk of confusion within only one part of the EU, It is also sufficient to show that the above use infringes the monopoly rights of the said EU trademark. Therefore, European Court of Justice Ornua Grounds of appeal, It was found that the court of first instance had erred in comparing the disputed trademarks, In determining whether the use of the disputed mark creates a risk of confusion in all areas of the EU, It is also wrong to rely on the fact that the trademarks in question coexist in Ireland and the UK. Second question to the Alicante Court of Appeal, The answer from the European Court of Justice is still yes. specifically: -basis "Community trade marks Ordinance (The first (EC) 207/2009 No) " The first 9. 1. b) Check whether there is a risk of confusion, A comprehensive assessment of all relevant elements of a particular case should be carried out; -Contra-contested mark, A comprehensive assessment should be made of the overall impression created by the public concerned in the commercial process of the EU trademark and the national trademark involved; -To achieve the above purpose, It is necessary to consider market conditions, Sociocultural and other possible influences, In order to identify the general consumer in all areas of the EU (average consumer) Overall impression of the EU trademark and national trademark involved in the business process. It's worth noting, As can be seen from the second point above, The position of the European Court of Justice on this issue is in contrast to Ornua The same grounds of appeal, Judging EU trademark "KERRYGOLD" with "KERRYMAID" Identify factors such as sociocultural and market conditions on which there is no risk of confusion, In Ireland and Britain and in non-English speaking countries (Spain) Could be totally different. Finally, The European Court of Justice replied in the negative to the third question of the Alicante Court of Appeal. Again, the European Court of Justice affirmed Ornua Cause of action, Point out "KERRYMAID" There are valid grounds for fair use in Ireland and the United Kingdom, The same cannot be said for the EU, where disputes over trademarks cannot coexist peacefully.

[comment] To sum up, The European Court of Justice said yes Ornua Grounds of appeal. While the case is before the European Court of Justice, T&S The judge is required to be explicit in his ruling, basis "Community trade marks Ordinance (The first (EC) 207/2009 No) " The first 12. b) article, Facts of the case—— "KERRY" Descriptive language——The potential influence on judging whether there is confusion risk of the disputed trademark. Ornua Oppose the above claim, It was considered that the question was not included in the Alicante Court of Appeal's request for a preliminary decision by the European Court of Justice. however, Assistant judge in this case (Advocate General, Also translated as "Legal counsel" ) It holds that the above claims are relevant to the dispute settlement of the case, The above questions are answered in its conclusion. But the presiding judge did not accept the assistant judge's opinion in the final ruling, In its reply to the member States' courts, It was mentioned only in passing (His opinion was also at odds with the advice of the associate judge) . No matter what, Since the parties to the dispute mentioned it in their appeals to the courts of the member states "KERRY" Descriptive language problems, The appellate court should answer this question in its decision.

compile: Liu Dan, The source of Aisabri Legal Counsel: Esabaril (ELZABURU) Intellectual property cover image source: Bing Pictures