The Supreme Court has overturned a High Court order revoking Danone’s ESSENSIS trademark for yogurt, finding that the High Court applied an unduly restrictive test for genuine trademark use.
The judgment, delivered by Macken J. on 19 May 2010, arose from Danone’s appeal against a High Court decision that it had not genuinely used the mark in Ireland during the relevant five-year period. The Supreme Court set aside that judgment and order and substituted an order refusing Glanbia’s application to revoke the trademark under section 51(1)(a) of the Trade Marks Act 1996.
Danone had sued Glanbia, alleging that Glanbia’s use of ESSENCE infringed its registered ESSENSIS mark. Glanbia denied infringement and counterclaimed for revocation, arguing that ESSENSIS had not been genuinely used for the registered goods. It said the mark appeared with “Bifidus” to identify a yogurt ingredient, rather than the yogurt itself. Glanbia also alleged bad-faith registration. The High Court rejected the bad-faith claim; Glanbia did not appeal that finding.
The High Court had found that ESSENSIS appeared on yogurt packaging and in advertising but was used to identify a probiotic culture, not the yogurt. It revoked the registration after concluding that the use did not perform the trademark’s essential function of identifying the origin of yogurt.
On appeal, the Supreme Court considered whether the mark’s use on and in promotion of yogurt could be genuine use for yogurt even though ESSENSIS identified a culture within it. Macken J. said the culture was integral to the yogurt and that the mark was used in marketing and advertising for the yogurt, including to distinguish it from competitors’ products. The Court found no relevant legal distinction between this use and the use of a mark on spare parts considered by the European Court of Justice in Ansul.
The Supreme Court held that the High Court had misapplied the principles on genuine use. It concluded that the evidence established sufficient genuine use of ESSENSIS for yogurt and that no reference to the European Court of Justice was needed. The appeal concerned the revocation claim; the judgment did not decide the original infringement issue.