The makers of Kerrygold
butter are suing Old World Creamery, the Wisconsin company that announced last week it would start selling Irish butter under the name Irishgold.
Illinois-based Ornua Foods North America Inc. and Ireland based Ornua Co-Op Ltd. are seeking to block Old World Creamery LLC and Eurogold LLC, both based in Sun Prairie, from selling butter under a name “obviously derived” from Ornua’s Kerrygold trademark.
The plaintiffs sought an emergency hearing in the U.S. District Court for Eastern Wisconsin on a temporary restraining order. A hearing was held Monday afternoon, but no decision was immediately made on the order.
"We are prepared to respond and vigorously defend Old World Creamery, LLC and Eurogold USA, LLC against the allegations raised by Ornua," said Sherry Coley, an attorney with David and Kuelthau s.c. representing Old World Creamery.
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.
Ornua worked with the state Department of Agriculture, Trade and Consumer Protection to develope a solution that would allow sales but require Kerrygold butter to be processed, packaged and grade a second time at a Wisconsin facility.
The complaint says Ornua began discussions with Weyauwega Cheese, an affiliate of Old World Creamery
, in September. Those discussions led to a confidentially agreement, site visits and an initial production run witnessed by Ornua technical personnel. Ornua ultimately shipped 40,000 pounds of Kerrygold to Weywauwega from which 417 cases of finished product were ultimately made.
Ornua says that “despite successful trial runs” Weyauwega and Old World Creamery “started to become less responsive in late February and early March.” The complaint says Steve Knaus, managing partner of Old World Creamery, told Ornua in early March the company was considering working with Waterford Irish Dairy
The complaint says Ornua objected to Old World Creamery working with Waterford and the two sides discussed the possibility of an exclusive relationship with Ornua providing volume guarantees, but Knaus told Ornua on March 30 that Old World would be signing an agreement with Waterford “no matter what terms Ornau offered.”
A week later Old World announced it would begin selling Irishgold, starting with a kickoff event today at the Woodman’s store in Sun Prairie.
The complaint says the packaging for Irishgold is “substantially similar” to what is used for Kerrygold and “shows a deliberate effort to trade off the enormous goodwill and strong reputation that Ornua has built up in the Kerrygold brand for many years.”
Ornua adds that Old World Creamery could have chosen any name, but chose Irishgold “to take advantage of the publicity surrounding the current unavailability of Kerrygold Irish butter in Wisconsin.”
“The likelihood of confusion is not hypothetical,” the complaint says, noting the Chicago Tribune published an Associated Press story on April 7 about the sale of Irishgold and illustrated it with a photo of Kerrygold butter.
Ornua also says social media comments about the product launch seem to indicate many people have interpreted media coverage as indicating “Kerrygold products are or are about to become significantly more available in Wisconsin.”