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Kerrygold Update: A Buttery Settlement

Posted in Branding, Infringement, Law Suits, Mixed Bag of Nuts, Product Packaging, Trademarks, USPTO

A few months ago I posted about a trademark infringement lawsuit filed by Ornua, seller of Kerrygold® Pure Irish Butter, against Defendants Old World Creamery and Eurogold USA, who briefly sold Irish butter under the mark Irishgold. The court granted Ornua’s motion for a temporary restraining order (TRO), concluding that Ornua had a reasonable likelihood of success on its trademark infringement claims, and that Ornua would suffer irreparable harm based on Defendants’ use of the Irishgold mark.

I concluded my post by suggesting that the grant of the TRO may push the parties to settlement. When a TRO is granted, it sends a strong signal to the parties about how the court may rule down the road at the summary judgment stage, because a key factor in granting the TRO is the court’s determination that the plaintiff has a “reasonable likelihood of success on the merits.”

Following the grant of the TRO, the parties indeed shifted to settlement talks and a mediation. Last month, the parties executed a settlement agreement and filed a stipulated motion for a consent judgment and permanent injunction, which was granted by the court.

Unsurprisingly, several terms of consent judgment and injunction focus on the IRISHGOLD mark, and generally require Defendants to cease use of that mark in connection with the sale of butter and other dairy products, and to expressly abandon the trademark application for IRISHGOLD. However, it is interesting that the consent judgment allows Defendants to continue using the mark “EURO GOLD” for butter, and to maintain the trademark application for EUROGOLD, provided that an amendment is entered with a space or hyphen (EURO GOLD or EURO-GOLD), and provided that the identification of goods “butter and butter blends” is amended to add the exclusionary language “but excluding Irish butter and Irish butter blends.”

I wonder if there is any wiggle room here for the Defendants to the extent there is ambiguity in the meaning of “Irish butter,” as suggested in my previous post. At one end, it seems clear that imported butter that is manufactured, graded and packaged in Ireland, from Irish cow’s milk, is “Irish butter.” But what about butter that is manufactured, graded and packaged entirely within the U.S., but includes milk from Ireland as an ingredient–which is essentially how the Defendants’ butter is made. What do you think?