The High Court has ordered the revocation of Danone’s Irish ESSENSIS trademark after finding that its use on yogurt packaging identified an ingredient, rather than the yogurt itself.
In a judgment delivered on 20 April 2007, Ms Justice Finlay Geoghegan ruled on two claims in Glanbia Foods Society Limited’s counterclaim. The proceedings had been admitted to the Commercial List, with the counterclaim issues to be heard before the separate trademark infringement claim. The judgment did not decide that infringement claim.
Danone’s trademark was registered for goods in classes 5, 29, 30 and 32. Glanbia sought revocation on the basis that the mark had not been put to genuine use for the registered goods within five years of publication. It also sought a declaration that the registration was invalid because Danone had applied in bad faith.
The judge found that from 2000 to September 2004 Danone used ESSENSIS on packaging and promotional material for yogurt sold as Bio Activia or Activia. The mark appeared with “Bifidus” and referred to a probiotic culture that Danone said was unique to it. The yogurt itself was identified by the Danone, Bio Activia or Activia brands.
The court concluded that ESSENSIS had not been used as a trademark for yogurt. Although it appeared on packaging and in advertising, the way it was presented confined its meaning to an identified ingredient. The judge said that use for the registered product had to be capable of being understood as referring to that product, so that the mark could identify its commercial origin. She found the mark had not met that requirement for yogurt or any other registered good or service.
The judge therefore ordered revocation under section 51(1)(a) of the Trade Marks Act 1996. She did not decide Glanbia’s further submission about use of ESSENSIS alongside the word “Bifidus”, because the finding on genuine use made it unnecessary.
Glanbia’s bad-faith claim was dismissed. Glanbia relied on the breadth of the registered goods and the absence of genuine use, arguing these supported an inference that Danone had no genuine intention to use the mark. The judge found that Glanbia had provided no evidence about the original application, the intention stated in it or other contemporaneous evidence of dishonest intent. She concluded that Glanbia had not discharged its burden of proof.