NZ brand files counterclaim against Irish brand that cited packaging similarities in butter products
09 February 2023
Leading butter brand from New Zealand Westgold filed a counterclaim in the United States against an Irish brand which accused the former of trademark infringement.
Dairy cooperative Ornua, producer of Irish butter brand Kerrygold filed a lawsuit in the US against Westland Dairy Company, owner of the Westgold brand. Ornua claimed that Westgold’s packaging in the US bore strong similarities to that of Kerrygold.
Both products’ packaging include a cow and the words “grass fed.” The packaging are also both in gold, with Kerrygold using gold foil for its salted butter.
“I agree that there are similarities, but that is not the end of the inquiry for determining a likelihood of confusion,” said Rebeccah Gan, principal
at Muncy, Geissler, Olds & Lowe in Virginia.
“The wording GOLD is a common term for butters in the US, particularly as a ‘second word’ in a two-part expression. Similarly, GRASS-FED is informational non-functioning matter, for which butter manufacturers have a competitive name to use. In addition, imagery of cows, particularly Holsteins, are common on dairy products. The court will need to balance all of these factors to determine whether consumers are likely to be confused,” she explained.
According to Gan, most dairy cows in the US are Holstein, a breed of cattle originating from Netherlands and northern Germany. Hence, US consumers think of Holstein as being de facto cows.
In terms of the gold foil or gold box packaging, Gan said Kerrygold is not the sole user of gold foil/gold box in the US. Other butter brands also use gold foil such as Plugra, Finlandia, Beurre D’Isigny, Grassland and Wuthrich. Even more common in the butter industry are the gold or yellow boxes.
“Consumers in the US are likely to ‘read’ block form - as opposed to stick - butter wrapped in foil to mean ‘imported’ or ‘European-style.’ Arguendo, gold or yellow boxes, as opposed to foil, are even more common in the industry and do not function as a trademark. Ornua’s trade dress registration is for a gold foil wrapper with ‘KerryGold’ in white on a green grass carrier element with a Holstein cow and a flour design. The wording ‘MILK FROM GRASS-FED COWS’ is expressly disclaimed. The shape of the butter is expressly disclaimed. Even viewing the totality of the similarities in the trade dress, including the gold foil, I think that Westgold could very well prevail in arguing that either Ornua’s registration’s claim to gold foil required more evidence of acquired distinctiveness or that the coverage afforded by their trade dress registration is so thin that they cannot stop Westgold,” Gan explained.
“In my view, consumers can amply distinguish ‘WESTGOLD’ from ‘KERRYGOLD,’ particularly given that the Westgold product clearly delineates that the product is churned from fresh cream in New Zealand,” she added.
- Espie Angelica A. de Leon