Dairy giant Ornua fails in ‘trade dress’ row as court is told of $226m spend on adverts
The figure was revealed in a court order last Monday, in which a US judge struck down Ornua’s trade dress infringement claims against a rival US company over the Irish firm’s Kerrygold butter brand.
Ornua brought a case in the US against Abbey Specialty Foods and its unsalted Tipperary butter brand, claiming the package was confusingly similar to Kerrygold’s.
Abbey moved for summary judgement on Ornua’s claims of trade dress infringement, unfair competition and deceptive business practices.
The US court found the two packages were not likely to be confused and granted Abbey summary judgement.
Kerrygold unsalted butter
The only surviving part of Ornua’s claim against Abbey is for trade dress dilution.
‘None of the evidence suggests that Abbey intended to deceive consumers’
In the court opinion, seen by the Sunday Independent, US District Judge Jessica Clarke wrote: “Even viewing this evidence in the light most favourable to plaintiffs, Ornua has failed to demonstrate that Abbey created the Tipperary Trade Dress with the intent to deceive consumers.
“Ornua’s evidence demonstrates at most that Abbey intended to imitate features of Kerrygold’s packaging.
“But none of the evidence suggests that Abbey intended to deceive consumers into believing that its butter was made or sponsored by Kerrygold.”
The court documents also revealed details of Ornua’s Kerrygold business in the US.
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The company has claimed Kerrygold holds the number two position for branded butter in the US market and is the leader in imported butter.
In the court documents, Ornua said that between 2018 and 2022, it had spent over $226m on adverts in North America relating to its Kerrygold brandacross numerous media forms including print, television, and digital and social media.
The court filing said that since 2018, sales of Kerrygold unsalted butter have accounted for over 30pc of the US market for unsalted premium butter products.
In August 2020, Abbey told the designer to change the packaging on its salted butter
Kerrygold’s unsalted butter sales in the US more than doubled from $30.9m in 2018 to $68.6m in 2022.
The court filings also showed Lakeland Dairies – a member of Ornua – had emailed Abbey’s owner in June 2020.
Lakeland Dairies was a supplier of Abbey’s.
Lakeland warned Abbey that “Ornua could throw the weight of their trademarks (including trade dress) into legal proceedings against… Tipperary”.
The email mentioned Ornua had a specific trademark for the gold foil and green writing on its Kerrygold butter brand.
In August 2020, Abbey instructed the package designer to change the packaging for its salted butter from gold foil to black.
However, it did not change the silver packaging for its unsalted butter. Kerrygold’s unsalted butter is also in a silver package.
A spokesman for Ornua said it places “the highest priority on the protection of the Kerrygold brand and its distinctive trademarks and trade dress”.
He added that the group had no further comment to make.