KERRY SPRING registration steams through

European Union

In Gerolsteiner Brunnen GmbH & Co v Kerry Group plc, the Board of Appeal for the Office for Harmonization in the Internal Market (OHIM) has upheld a decision to allow the registration of KERRY SPRING. The board held that it was unlikely that consumers would confuse the trademark with Gerolsteiner Brunnen's GERRI mark.

Kerry Group, a consumer food and beverages manufacturer based in Ireland, applied to the OHIM to register for mineral water the mark KERRY SPRING and related pictorial elements of a tranquil lakeside scene. The name 'Kerry' refers not only to the company but also to a county in Ireland from which the water originates. Gerolsteiner Brunnen, a German producer of beverages, opposed the registration on the grounds that Kerry's mark was confusingly similar to its prior German registration of GERRI for mineral water and other non-alcoholic drinks. The Opposition Division of the OHIM rejected the opposition and Gerolsteiner appealed.

Gerolsteiner argued that the relevant German public would confuse the two marks because they would associate the English word 'spring' with a 'natural outflow of ground water' by virtue of its inclusion in German words such as 'springquelle' (meaning 'geyser') and 'springbrunnen' (meaning 'fountain'). Gerolsteiner also contended that confusion was likely because of the common 'err' element in GERRI and KERRY. It further maintained that the proceedings should be suspended until the European Court of Justice (ECJ) answers a question regarding use of geographical indications as trademarks, arising from litigation in Germany involving Gerolsteiner and Kerry's German distributor (Gerolsteiner Brunnen GmbH & Co v Putsch GmbH, Case C-100/02).

The Board of Appeal rejected Gerolsteiner's arguments and upheld the earlier decision to allow Kerry's registration. The board held that the relevant German public would not confuse the two parties' marks because they would not necessarily connect the term 'spring' with water. It reasoned that the incorporation of the word 'spring' in Gerolsteiner's German examples arose from the German verb 'springen' (meaning 'to jump') which in itself does not have any reference to water. Moreover, the board noted that there are various different meanings of the word 'spring' in English, and that German consumers might associate the word with one of those other meanings. The board further held that the KERRY SPRING mark could not be reduced simply to KERRY for comparison purposes. The other elements of the mark including the word 'spring' and the pictorial design had to be considered as they are both distinctive. The board also rejected Gerolsteiner's claim that the proceedings should be suspended. It concluded that as there was no risk of confusion, it was not necessary to suspend the proceedings pending the decision of the ECJ.

Niamh Hall, FR Kelly & Co, Dublin

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