Compagnie Gervais Danone v Glanbia Foods Society Limited
On 19 May 2010, the Supreme Court set aside a judgment and Order of the High Court and substituted an Order refusing Glanbia’s application for revocation of Irish Registered Trademark No. 211092 ESSENSIS in Class 29.
Danone had filed proceedings against Glanbia in early 2006, claiming that Glanbia, through its use of the mark or sign ESSENCE in relation to a yoghurt product, had infringed Danone’s registered trademark ESSENSIS in the State. Glanbia by way of counterclaim, claimed that Danone did not have any legitimate entitlement to maintain the trademark registration because it had not put the registered trade mark to genuine use in the State in relation to the goods for which it was registered within the statutory period of five years from the date of publication of the registration. Glanbia further claimed that the application for registration of the trademark had been made in bad faith and for that reason should be declared invalid.
The High Court found that Danone had failed to establish any genuine use in the State of the ESSENSIS trademark in relation to yoghurt, and that any use of the trademark had been solely in relation to a culture within Danone’s “Activia” yogurt – for which no registration in Class 1 existed. Accordingly, it held that Glanbia was entitled to an Order for its revocation under s.51(1)(a) of the Trade Marks Act, 1996 (TMA 1996), but it did not succeed on its claim that the trademark had been registered in bad faith.
In a judgment delivered by Ms. Justice Fidelma Macken, the Supreme Court concluded that the learned High Court judge “applied an unduly restrictive interpretation” of the principles set out in ECJ case no.C-40/01 Ansul B.V. v Ajax Brandbeveilinging B.V. [2003].
The judgment is interesting for a number of reasons – in particular:
- the learned judge found that no real distinction in law could be drawn between the requirements for use as expressed by the phrases “in connection with the goods” (found in the Art.12(1) of the Directive), “in relation to the goods” (found in s.51(1) of the TMA 1996) and “for the goods” (found in the corresponding German, French, Dutch, Spanish and Italian versions);
- the judge found that the trademark had capacity to fulfil its essential function – that is to distinguish the goods of one enterprise from another and did not fall foul of s.8(3)(c) of the TMA in that the trademark was not in itself descriptive of the characteristics of qualities of the goods;
- from a trademark law point of view, the Judge found that there is little or no distinction between use of a trademark in respect of spare parts of a product, such as in the case of the trademark MINIMAX in the Ansul case and use of a trade mark in respect of a specific ingredient in a product, such as is designated by the trademark ESSENSIS in this case; and
- the judge also found that the use actually made of the ESSENSIS trademark is sufficient to meet the general criteria set out in the Ansul case – namely, that there is genuine use of a trademark “where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services”.
On a whole, the judgment demonstrates the willingness of the Irish courts to adopt a wide interpretation of the concept of genuine use.
