Yogurt name battle turns sour for Danone

Ireland

In Compagnie Gervais Danone v Glanbia Food Society Limited, the High Court of Ireland has ordered the revocation of the mark ESSENSIS on yogurt products.

The plaintiff, Compagnie Gervais Danone, owns the Irish registered trademark ESSENSIS in respect of a range of products in Classes 5, 29, 30 and 32 of the Nice Classification. The specification in Class 29 includes "milk, powder milk, flavoured gelled milk and whipped milk; milk products namely: milky deserts, yogurts, yogurts to drink … fermented milk products". The defendant, Glanbia Food Society Limited, in 2006 launched onto the Irish market a range of fermented milk products under the Yoplait brand which bear a particular representation of the word 'essence'. Danone contended that the use made by Glanbia of the mark ESSENCE in respect of its fermented milk products was an infringement of the ESSENSIS trademark.

In the defence and counterclaim, Glanbia denied infringement of the trademark ESSENSIS and attacked its registration as follows:

  • It sought revocation on the grounds that, within the period of five years following the date of publication of its registration, ESSENSIS had not been put to genuine use in relation to the goods for which it is registered; and

  • It sought a declaration of invalidity on the basis that ESSENSIS was registered in bad faith and Danone had never had any intention of putting ESSENSIS to use in Ireland.

An order was made directing the trial of the above claims and the counterclaim prior to the hearing of the infringement issue.

The High Court held that the onus of establishing genuine use of the ESSENSIS mark in relation to the goods for which it is registered was on Danone as proprietor of the trademark. While the parties were in substantial agreement as to the law to be applied by the court in determining 'genuine use' they disagreed as to what constituted genuine use of a mark "in relation to the goods … for which it is registered". Between 2000 and 2004 ESSENSIS had been used by Danone in connection with the marketing, promotion and sale of its yogurt initially sold under the brand names Danone and Bio Activia. On the front of the packaging under the names Bio Activia and Danone were the words "with BIFIDUS ESSENSIS cultures" and after the word 'ESSENSIS' was the '®' symbol. In 2002 'Bio' was dropped from the Bio Activia brand name, and the yogurt was marketed and packaged under the same representation of Danone and the name Activia under which was written "with BIFIDUS ESSENSIS ®". Evidence was presented that BIFIDUS ESSENSIS was the brand name for the unique pro-biotic culture bifidobacterium animalis DN 173010 which was identified by scientists at Danone for its unique benefits for digestive health. BIFIDUS ESSENSIS is not found in any other yogurt and is unique to Danone.

On the facts, the court was not satisfied that the use made of ESSENSIS was use as a trademark in relation to yogurt as its use had been unequivocally confined to referring to an identified ingredient of the yogurt as distinct from the yogurt itself. Genuine use as a trademark for a specified product requires that the mark be applied in such a way that it is, at minimum, capable of being understood as referring to that product. Unless it is so applied it cannot be used for the purpose of identifying the origin of such product. Therefore, the court concluded that Danone had not proved genuine use of the trademark ESSENSIS in relation to yogurt (or any other product or service for which it is registered) within five years of its publication and Glanbia was entitled to an order for its revocation.

Glanbia also asserted that Danone had never had any bona fide intention of putting ESSENSIS to use in Ireland in relation to the goods for which it is registered and accordingly the application for registration was made in bad faith and ought to be declared invalid. Glanbia submitted that the fact that the application for registration was made for wide classes of goods and that no genuine use had been made of the trademark for any of the goods for which it is registered raised an inference that Danone, at the time of registration, had no genuine intention to use the registered trademark in relation to such goods, and that in such circumstances the application was made in bad faith.

The court held that this submission was incorrect in law. Where an allegation is made that an application to register was filed in bad faith, all the circumstances of the application will be relevant. Where, as on the facts of this case, the allegation is a dishonest intention or lack of honest intention to use the trademark for goods for which registration was sought this would require at minimum evidence to be adduced of:

  • the application made;

  • the stated intention of the applicant as disclosed in the application; and/or

  • other relevant contemporaneous evidence as to the probable intention of the applicant at the time of the application.

Glanbia had adduced no such evidence and in its absence it could not be considered to have discharged the onus of establishing bad faith by Danone in its application for registration.

Patricia McGovern, DFMG Solicitors, Dublin

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