Summary of Jurisprudence
October 2017

Coexistence agreements and European Union trademarks

CJEU, July 20 2017 – C-93/16

Ornua Co-operative Ltd (KERRYGOLD) / Tindale & Stanton Ltd Espana SL (KERRYMAID)


Irish company Ornua holds several verbal and semi figurative European Union Trademarks (EUTM) “KERRYGOLD”, notably registered for butter and dairy products. These trademarks are used in particular in Spain, Ireland and the United-Kingdom.


Spanish company Tindale & Stanton imports and distributes margarines in Spain under the trademark “KERRYMAID”. These products are manufactured and distributed by Kerry Group plc, which has registered the trademark nationally in Ireland and in the United Kingdom.


These national trademarks coexist peacefully with the EUTMs "KERRYGOLD" of Ornua in these two countries.


However, on the basis of its own trademarks "KERRYGOLD", Ornua brought an infringement action against Tindale & Stanton before the Spanish Court.


The Court of Appeal of Alicante (ES) referred several preliminary questions to the CJEU, in particular as to whether the unitary nature of the EUTM makes it possible to consider that the coexistence observed in Ireland and the United Kingdom automatically leads to the conclusion that there is no likelihood of confusion in any other EU countries.


The CJEU reminded first of all, that the unitary nature of a EUTM must lead to admit that the rights of its owner are infringed as soon as an infringement is established in one or more Member States. There is no need to characterize the infringement throughout the whole Union's territory.


However, the CJEU made a clarification: if in one part of the Union (in this case Ireland and the United Kingdom) a EUTM and a national trademark coexist peacefully, it must not lead to the conclusion that in another part of the Union (in this case Spain) there is no likelihood of confusion.


On the contrary, all relevant factors (e.g. market conditions and socio-cultural circumstances) must be assessed to determine whether or not there is a likelihood of confusion.


This decision certainly confirms that the protection of a EUTM is unitary, but it indicates that it is nevertheless possible for the owners of these trademarks to coexist with national trademarks in a particular Member State, without accepting this coexistence throughout the whole territory of the Union.


In other words, a peaceful coexistence in one Member State does not automatically foreshadows the same coexistence in other countries. Attention must therefore be paid to the provisions regarding the territorial scope in coexistence agreements.



Honest use by a third party of a sign which became common

Cour de cassation (High Court), commercial chamber, July 5 2017 – n°15-28.114, P+B+I

« Buckfast »


The trademark “Buckfast” has been registered in 1981 and then regularly renewed for goods and services related to beekeeping and hive products.


In 2003, a beekeeper published advertisements in professional magazines to sell “Buckfast” hives and swarms and queens from “Buck” farms.


The owner of “Buckfast” brought an action against the beekeeper for infringement on his prior trademark.


After several referrals, Nancy Court of Appeal granted this infringement action given the identity of the signs and the products/services claimed (CA Nancy, 1e ch. civ, 6 October 2015). The Court of Appeal also puts an end to the possible degeneration of the trademark Buckfast raised by the defendant, judging that the popularization of the term “buckfast” was not “due to its owner”, which is a condition required by the French Intellectual Property Code.


The beekeeper challenged the decision before the High Court (Cour de cassation).


The Cour de Cassation censors and refers the parties on appeal on the grounds that Nancy Court of Appeal had deprived its ruling of a legal basis by not seeking to find out whether the beekeeper had not made “an honest use in industrial or commercial matters of a sign essential to the designation of the product sold”.


However, at the time of the incident, the judges had found that the terms “buckfast” and “buck” had become common to refer to a certain type of bee, but did not draw any conclusions from it. 


This judgment illustrates one of the limits on the effects of the trademark: that of honest industrial or commercial use of indications relating to the type, quality, quantity, destination, value, geographical origin, time of production of the product or service or other characteristics thereof (Article 6.1.b. European Directive n°89/104/EEC December 21, 1988).


This limit is set in order to combat the reservation and monopoly of certain necessary terms in business language.


Contacts : Claire DAMBRINE and Valérie GENIN-SAMSON


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