## Facts

- Ornua Co-operative Ltd owned the EU word mark KERRYGOLD for butter and other dairy products.
- Tindale & Stanton Ltd España SL imported and distributed fats and margarines in Spain under the sign KERRYMAID, manufactured in Ireland.
- KERRYGOLD and KERRYMAID coexisted in Ireland and the United Kingdom, where both were protected and used without enforcement action preventing parallel use.
- In Spain, Ornua used KERRYGOLD; Tindale & Stanton sought to introduce KERRYMAID.
- Ornua sued in Spain alleging infringement of its EU trade mark rights based on likelihood of confusion and, alternatively, protection for a reputed mark.
- The Spanish appellate court referred questions to the Court of Justice concerning how partial-EU coexistence interacts with the unitary character and uniform protection of the EU trade mark.

## Issues

1. Whether peaceful coexistence of an EU trade mark with a similar national mark in certain Member States must be treated as negating likelihood of confusion for the EU trade mark in other Member States.
2. Whether such partial coexistence limits a finding that use of the later sign takes unfair advantage of, or is detrimental to, the distinctive character or repute of a reputed EU trade mark in a different Member State.
3. How the EU trade mark’s unitary character and uniform protection affect territorially different evidence about consumer perception.

## Decision

- The Court ruled that peaceful coexistence in part of the European Union may be considered in assessing likelihood of confusion, but only for the territories where coexistence is established and only insofar as it affects the relevant public’s perception there.
- Coexistence in certain Member States does not automatically preclude a finding of likelihood of confusion in other Member States where such coexistence has not occurred.
- For reputed marks, partial coexistence may be relevant to whether there is unfair advantage or detriment in the territory of coexistence, but it cannot be generalized to the entire Union.
- The EU trade mark’s unitary character does not require courts to ignore differences in consumer perception between Member States when applying the uniform legal tests.
- The referring court could still find infringement in Spain if Spanish consumers would likely be confused, or if use of KERRYMAID in Spain would create unfair advantage or detriment, notwithstanding coexistence in Ireland and the UK.

## Legal Principles

- EU trade marks have unitary character and uniform legal protection, but infringement analysis turns on the perception of the relevant public, which may differ across Member States.
- Peaceful coexistence between signs is a factual element that can reduce the likelihood of confusion, but its evidentiary weight is territorially limited to the markets where coexistence has been shown.
- Lack of confusion (or lack of detriment) demonstrated in one part of the Union does not, by itself, establish the same outcome in another part of the Union.
- For reputation-based protection, coexistence in some Member States does not necessarily prevent a finding of unfair advantage or detriment in a different Member State.

## Conclusion

The Court clarified that partial peaceful coexistence may inform, but does not control, the EU trade mark infringement analysis: uniform legal criteria apply across the Union, yet courts may reach different results based on market-specific evidence of consumer perception in the Member State where infringement is alleged.


Ornua Co-operative Ltd v. Tindale & Stanton Ltd España SL, Case C-93/16 (C.J.E.U. 2017)