Monday, 9 October 2017

Confused in Spain if not in the UK

Co-existence agreements have become routine in trade mark practice in the last few years (by which I now find I mean at least a decade - since 2005, in fact, when the Trade Marks Registry stopped refusing applications on relative grounds, meaning because someone already had a similar or identical trade mark already registered for the same or similar goods). Parties who would otherwise be locked in opposition proceedings can draw lines between their trade marks and the respective goods and services so as to avoid consumers becoming confused. But an agreement that overcomes problems in the UK won't necessarily help when a conflict arises elsewhere.

In a recent case, Ornua Co-operative Limited, formerly The Irish Dairy Board Co-operative Limited v Tindale & Stanton Ltd España SL the European Union's Court of Justice had to deal with a conflict between two Irish dairy companies, the owners of the well-known KERRYGOLD trade mark and the owners of the less well-known KERRYMAID trade mark. KERRYGOLD is registered as a European Union trade mark, while KERRYMAID is registered in Ireland and the UK.

It's not very surprising that the parties had struck an agreement to enable the trade marks to co-exist peacefully in the UK and Ireland. It's possible to argue that there's no likelihood of confusion on the basis that the common part of the trade marks is the name of an Irish county famed for dairy products, so the question whether GOLD and MAID are confusingly similar: but the fact that the KERRY part of the trade marks is the beginning makes them more confusing, and perhaps KERRYGOLD is well-enough known that consumers seeing KERRY-anything on the supermarket shelf would get muddled.

Leaving the co-existence agreement aside, problems arose when KERRYMAID was introduced to the Spanish market. No registered trade mark there, no co-existence agreement. KERRYGOLD sued for infringement (throwing in a dilution claim too), and the Spanish court decided that because the similarity lay in the KERRY element of the trade marks which was just a geographical location, and there was a co-existence agreement covering the UK and Ireland, there was no likelihood of confusion. KERRYGOLD appealed and the Spanish appeal court set off on an expedition to Luxembourg - in other words asked the Court of Justice for a preliminary ruling.

The Court, unsurprisingly, said that you can't assume that because there is a co-existence agreement in two Member States, there won't be a likelihood of confusion in other Member States. If the Spanish court had been persuaded that there was no material difference between the UK, Ireland and Spain, that might have justified a finding that there was no infringement, but that hadn't happened. Indeed, I would go on to say that the fact that there is a co-existence agreement in two Member States indicates that there is a likelihood of confusion in other Member States where the parties haven't struck a deal to prevent it.

I would also have made sure that the UK co-existence agreement made clear that if the junior trade mark owner wanted to enter the Spanish market, there would have to be a new agreement. I'm dealing with exactly the same problem for a client at the moment: the fact that the junior trade mark owner only has a UK trade mark struck me as pretty conclusive about the matter of using their name outside the UK. It would not be use of the UK trade mark in a third country, it would be the use of something identical to the UK trade mark, and therefore the agreement has to stop the junior trade mark owner doing anything outside the UK. Co-existence involving a UK trade mark can't amount to co-existence outside the UK.

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