The settlement requires the Wisconsin creamery to change its trademark application from “Irishgold” to “Eurogold” and “immediately remove all signage that includes the (Irishgold) mark,” according to a court document filed with the Eastern District Court of Wisconsin.
Background of butter naming battle
The settlement will end a trademark dispute that began when Ornua Foods could no longer sell Kerrygold in Wisconsin due to state legislation dating back to the 1950s. The dairy manufacturing requires that butter sold in Wisconsin must display either a Wisconsin or federal grade mark on its packaging.
This regulation effectively stopped Kerrygold butter from being sold in Wisconsin because it is graded, produced and packaged in Ireland.
To comply with the regulation, Ornua began working with Old World Creamery to produce its butter at the Wisconsin dairy producer’s manufacturing plants to make it eligible for sale in Wisconsin.
However, Old World Creamery backed out of the agreement and began producing their own butter under the brand name Irishgold in April 2017.
“Defendants’ (Old World Creamery) use of the Irishgold mark constitutes willful trademark infringement,” Ornua stated in a court document.
“And it is made worse here because 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.”
Packaging to remain mostly the same
Ornua also claimed that the packaging of Irishgold is substantially similar to Kerrygold in the original lawsuit.
As part of the settlement, Old World Creamery will still be able to use packaging depicting cows and pastoral scenes but may not use the Kerrygold name. It has since rebranded its butter products as as "Old World Creamery Irish Butter" to enter stores.
Both Ornua and Old World Creamery have agreed to drop all charges related to the trademark infringement case and incur their own costs and attorney fees.
Ornua Foods N. Am. v. Eurogold USA, No. 17-0510, Eastern District of. Wisconsin