Last updated on July 3rd, 2019 at 07:23 pm
A federal judge is blocking the sale of Old World Creamery’s Irishgold butter by granting a temporary restraining order sought by the makers of Kerrygold Irish butter.
Ornua Co-Op Ltd. and its North American affiliate sought to block Sun Prairie-based Old World Creamery from beginning sales of Irishgold earlier this week at Woodman’s stores around the state. Ornua argued the Irishgold name was “obviously derived” from its Kerrygold trademark and confusing to consumers, pointing to media stories about the Irishgold launch illustrated with photos of Kerrygold.
An initial hearing was held on Monday, but no decision was made. Irishgold sales began Tuesday with a kickoff event held at the Woodman’s store in Sun Prairie.
But Judge J.P. Stadtmueller on Thursday determined Old World Creamery lacked due diligence in its initial marketing efforts to avoid trademark problems and the marketplace “provides evidence strongly favoring” Ornua, according to court documents.
Stadtmueller granted Ornua’s motion for a temporary restraining order blocking sales of Irishgold, but left it to the parties to determine how to handle product currently on store shelves. He left open the possibility it could be donated to charity, but said it could not be sold.
Old World Creamery said in court filings this week it had already packaged 40,000 pounds of Irishgold and would have to pay its retailers a minimum of $20,000 just to remove the product on store shelves.
Kerrygold and other Irish butters have drawn attention in recent months as Wisconsin requires retail butter sold in the state to have either a Wisconsin or federal grade mark. Kerrygold is graded, produced and packaged in Ireland, preventing sales of the butter in Wisconsin.
Old World Creamery announced last week it would begin sales of Irish butter under the Irishgold name. The company imports the butter and grades, processes, and packages it a second time at its Sheboygan facility.
The two sides had been working to establish a similar relationship for several months until Old World Creamery told Ornua it was also in discussions with Waterford Irish Dairy. Ornua sought to make the negotiations exclusive, but talks broke down at that point and Old World Creamery moved forward with Waterford.
Ornua said it had put 18 months into getting access to the Wisconsin market, including talks with the Department of Agriculture, Trade and Consumer Protection before reaching out to Old World Creamery.
Attorneys for Ornua directed requests for comment to Stadtmueller’s decision and attorneys for Old World Creamery did not immediately respond to requests for comment.