In Case C93/16, Ornua Co-operative Ltd (Ornua) brought an action against Tindale & Stanton Ltd España SL (Tindale) for trade mark infringement. Ornua is in the food sector and owns EU trade marks for KERRYGOLD (stylised). Ornua sold its products in several countries in the EU, including Spain and the UK. Tindale is a Spanish company which exports goods marked under the brand KERRYMAID. Tindale manufactures margarine products, which are made in Ireland and then distributed in Spain.

Ornua brought an action against Tindale’s use of the mark KERRYMAID in the Spanish Court, as the Court with the capacity to deal with EU trade mark matters. The Spanish Court initially dismissed the case and found no trade mark infringement. Ornua appealed this decision, and the appellant court referred several questions to the Court of Justice of the European Union (CJEU). These questions related to the unitary nature of the EU trade mark.

The first question was whether co-existence in UK and Ireland (as countries in the EU) of the KERRYMAID and KERRYGOLD marks meant that there would be no likelihood of confusion of the marks throughout the entire European Union. The CJEU held that even if the EUTM and the national marks did co-exist in UK and Ireland, which seemed to be the case in this situation, the conclusion should not automatically be that there would be peaceful co-existence across all of the EU. This is because there needs to be a global assessment of all the relevant factors in the case concerned, and that assessment may lead to different conclusions in different countries, especially in view of linguistic diversity.

The second question concerned the impact of indications of geographical origin, as Kerry is an Irish county known for producing cattle. The question was whether or not the Spanish courts could take the geographical significance of KERRY into consideration in deciding whether or not there was infringement in Spain. The CJEU held that the Regulations should be interpreted as meaning that factors such as the geographical significance of the term in one part of the EU (here, Ireland) could be taken into account in assessing whether there was infringement in another part of the EU (Spain), but only if market conditions and sociocultural circumstances were not significantly different in those respective parts of the EU.

The third question asked whether the fact that an EU trade mark with a reputation and a sign peacefully co-exist in one part of the EU means there is due cause legitimising the use of the same sign in another part of the EU where that peaceful coexistence is absent. The CJEU held that the Spanish appellant court cannot merely base its assessment of due cause on the peaceful co-existence in Ireland and the UK when assessing infringement in Spain. Rather, there has to be a global assessment of all relevant factors.

This case reminds us that despite the unitary nature of the EUTM as outlined in the Regulations, case law suggests that it is more ‘unitary’ in some ways than in others. In many instances, even if a claimant is able to bring a claim on the basis of the unitary nature of the EUTM, the claim could fail due to the diversity in market conditions around the EU. For example, a claimant can rely on the reputation of an EUTM in an action in member state X even if they can only demonstrate reputation in member state Y, but such a claimant would struggle to demonstrate unfair advantage and detriment (the injuries necessary for a successful claim based on reputation) if they cannot show any sort of reputation of their EUTM in member state Y. There are certain national factors that must be taken into account, e.g. language or sociocultural aspects, all of which would impact on the local consumer.