Danone's ACTIVIA mark revoked for non-use, except in respect of yoghurts

In Nutrichem Diät + Pharma GmbH v Compagnie Gervais Danone, the hearing officer has decided that the trademark ACTIVIA should be revoked for all goods covered by the registration, with the exception of certain goods in Class 29 of the Nice Classification.

Compagnie Gervais Danone was the registered proprietor of the trademark ACTIVIA in respect of goods in Classes 29, 30 and 32. Nutrichem Diät + Pharma GmbH sought to revoke the mark on the basis that it had not been used in the state for a period of five years and that there were no proper reasons for such non-use.

The hearing officer decided to grant a partial revocation under Section 51 of the Trademarks Act 1996 and to revoke the mark in respect of all goods in Class 30 and in Class 32, and for all goods in Class 29 with the exception of “dairy products, namely, yoghurts, drinking yoghurts, mousses, milky desserts”.

The application for revocation was not contested in respect of any goods in Class 30 and, as such, the registration of the mark was revoked in Class 30. In respect of the goods in Classes 29 and 32, the hearing officer noted that it was:

“abundantly clear that the ACTIVIA mark has been used extensively in the state during the periods in question and that the mark has gained a strong reputation and a high level of goodwill. But reputation and goodwill are not sufficient to overcome an application for revocation that is grounded on non-use. The proprietor must put the mark to use for each good for which it is protected, failing which the mark is liable to be revoked in respect of goods for which use has not been demonstrated”.

The hearing officer held that the evidence submitted by Danone proved that the mark was used in respect of yoghurt or yoghurt-based products.

In respect of Class 32, the hearing officer held that whilst “pouring yoghurt” could fall into the category of “alcohol-free drink” in Class 32:

“the trademark registration system is based on classifying good into fields to which, in principle, the goods belong. It is not the case that good must be classified according to all possible descriptions or uses – the classification must be based on a fair and reasonable categorisation, according to the normal purpose or function, as defined by the Nice Classification.”

The hearing officer observed that, just because yoghurt is also used as a facemask in beauty treatments does not mean that it is, per se, a beauty product and should fall into Class 3. He stated that, whilst “pouring yoghurt” does not contain alcohol and may be drinkable, it is fundamentally yoghurt and, for classification purposes, it is proper to Class 29 and not Class 32. Accordingly, the registration of the mark was revoked in Class 32. 

In relation to the wider specification of goods in Class 29, namely “plain or flavoured beverages consisting of milk or of dairy products, beverages consisting mostly of milk starter cultures, milky beverages with fruits; plain or flavoured fermented milk products”, the hearing officer held that, while pouring yoghurt could be described using any of these descriptions, as the term “pouring yoghurt” is “itself mentioned in the specification (and there is no better way of describing pouring yoghurt), these other descriptions are redundant”. He stated that, in deciding on a fair specification for a mark, he must consider “the nature of the trade and how the product is, as a practical matter, regarded for the purposes of trade”. In this instance, the hearing officer observed that an average consumer would not go into a shop and ask for a “beverage consisting mostly of milk starter cultures” but, rather, would use the term 'pouring yoghurt' or 'drinking yoghurt'. The hearing officer thus restricted the specification accordingly.

The hearing officer accepted that not all Activia products could be described as yoghurts and noted that some of the evidence (ie, sample packaging, advertisements and point of sale material) submitted by Danone did not bear the word 'yoghurt'. The hearing officer held that the products could reasonably be described as milky desserts or mousses and, accordingly, he decided to allow the registration of the mark to stand in respect of those goods also. 

Colette Brady, DFMG Solicitors, Dublin