The use of a trademark by a Spanish food supplier which suggested its products came from Ireland is “contrary to honest commercial and business practices,” according to the EU’s top court.
The Court of Justice of the EU has dismissed an application by the Canary Islands-based company, Hijos de Moisés Rodríguez González (HMRG), to have a ruling by the EU Intellectual Property Office (EUIPO) on the controversial trademark annulled.
EUIPO declared in March 2020 that the use of the trademark “La Irlandesa” – which means “the Irish woman” in Spanish – by HMRG was deceptive and filed in bad faith.
HMRG had “La Irlandesa” registered as an EU trademark in January 2014 for a range of food products including meat, fish, poultry, dairy goods, fruit and vegetables, eggs and jams. The brand, which had been registered in Spain since 1967, includes cheese from the Netherlands and salami from Denmark.
However, the Minister for Jobs, Enterprise and Innovation and Ornua, which was known as the Irish Dairy Board up to 2015, sought a declaration by EUIPO that the trademark was invalid.
They argued that the trademark through its name, green, white and yellow colouring which evoked Ireland’s national colours and the symbolism of a Celtic knot, suggested its products came from Ireland.
Ornua, which is best known as the producer of the Kerrygold butter brand, said HMRG’s trademark was deceptive.
The Irish co-operative used to have a commercial relationship with HMRG up to 2011 and dating back to 1967 with the Spanish firm packing butter and selling it under both the La Irlandesa and Kerrygold trademarks.
Ornua claimed the disputed trademark was deliberately created to show the butter came from Ireland. However, HMRG ceased having any role in the sale and marketing of Kerrygold butter from 1984 following a legal action initiated by the Irish Dairy Board.
The Spanish firm claimed Ornua’s opposition to its trademark was an anti-competitive strategy after their long-standing partnership had ended. In the case before the CJEU, HMRG argued that the sign would be perceived as a trademark and not as an indication of country of origin.
However, the CJEU agreed with EUIPO that the word element of the trademark was its dominant feature and “misleading” as it clearly meant to convey to Spanish consumers that something was of Irish origin.
The Luxembourg-based court ruled that HMRG had acted in bad faith in applying to register the trademark with EUIPO as it tried to unfairly transfer the advantage derived from its association with Ireland to goods from other countries, particularly after the ending of its business relationship with the Irish Dairy Board.
“None of the arguments put forward by the applicant is capable of calling that finding into question,” the CJEU observed.