“Defendants could have chosen any name for their new product. Instead, they intentionally chose a name and packaging confusingly similar to the Kerrygold mark in order to take advantage of the publicity surrounding the current unavailability of Kerrygold Irish butter in Wisconsin,” plaintiff Ornua wrote in the court document.
Ornua told DairyReporter “as legal proceedings are still ongoing we cannot comment further at this time” and that the company looks “forward to a resolution of this matter.”
Old World Creamery and Eurogold have not responded to DairyReporter’s request for comment.
Irishgold trademark will lead to consumer confusion
According to the court document filed in the Eastern District Court of Wisconsin, Ornua stated: “Consumers wanting to purchase Irish butter will likely be misled into thinking that defendants’ Irishgold Irish butter is the work-around for selling Kerrygold Irish butter in Wisconsin, and will purchase Defendants’ product thinking it is Kerrygold Irish butter.”
Kerrygold Irish butter was pulled from all Wisconsin retailers earlier this year because of a law that requires state regulators to approve the food safety of butter products made outside the US.
Since Kerrygold is already graded, packaged, and produced in Ireland, Wisconsin retailers are banned from selling the butter.
Kerrygold had been selling its butter in the US for more than 15 years prior to the enforcement of the protectionist law in Wisconsin.
Ornua attempts to work within Wisconsin dairy law
Ornua attempted to solve the issue by working with the Wisconsin Department of Agriculture to help continue the sale of Kerrygold in the state. To meet Wisconsin’s requirements, Ornua agreed to have its butter processed, packaged, and graded a second time at a facility in Wisconsin, specifically Weyauwega Cheese.
After meeting with the owner of Weyauwega Cheese, Stephen Knaus, Ornua said it shared product specifications and grading procedures in order to begin the packaging and grading of Kerrygold Irish butter at the Wisconsin facility.
During the discussion, Ornua said it proposed to Weyauwega Cheese to sell Kerrygold in packs of two four-ounce sticks – packaging that Ornua has used successfully in other US markets. Ornua also shipped 40,000 pounds of Kerrygold Irish butter to Weyauwega, from which it said Weyauwega processed 417 cases of finished product.
How Irishgold butter came to be
Eurogold was formed on March 8, 2017, while Ornua said it was was continuing negotiations with Knaus, and on March 14, 2017, Eurogold filed a federal trademark application for “Irishgold.”
Irishgold butter can now be purchased throughout the state of Wisconsin and Illinois.
“The likelihood of confusion is also not accidental,” Ornua stated in the court document. “Mr. Knaus cut off discussions and decided to sell butter using Eurogold’s obviously derivative Irishgold mark, using packaging substantially similar to packaging for Kerrygold Irish butter.”
Ornua Foods North America and Ornua Co-Operative Limited v. Eurogold USA LLC and Old World Creamery LLC, Case No: 2:17-cv-00510, US District Court for the Eastern District of Wisconsin