April 2007
Use is of the "Essence"
The High Court of Ireland has reiterated the importance of “genuine use” in its recent decision involving Danone's Essensis mark. The French dairy giant had brought an action for infringement of its Essensis mark against Irish food group Glanbia Plc after the release of its Yoplait Essence brand of shot-sized yoghurt drinks on the Irish market. The court rejected the claim on the basis that there had been no genuine use of the Essensis mark in Ireland for a period of over 5 years and issued an order for the trade mark to be revoked.
Essensis is a scientific term for a bacterium used in the making of bio-yoghurt drinks. Danone had registered the mark and used it on packaging describing the key ingredients in its Bio Activia yoghurts often with the prefix Bifidus. Justice Finlay Geoghegan stated in her written judgment that “Essensis’ use has been unequivocally confined to referring to an identified ingredient of the yoghurt as distinct from the yoghurt itself” and concluded that “Danone has not proved genuine use of the trade mark Essensis in relation to yoghurt ... within 5 years of its publication and Glanbia is entitled ... to an order for its revocation."
This judgment will come as a huge blow to Danone as Essensis is a global trade mark with over 72 million products sold in Ireland alone. The company is considering its legal options.
Briffa's Opinion:
The judgment shows how important
it is for owners of trade marks to be fully aware of the use or uses
their trade marks are registered for. In this particular case Danone
had been putting it to a purely descriptive use rather then treating
it as brand. Further they had also failed to use the mark in the
form it had been registered as by placing the prefix Bifidus in front
of the mark. A revocation can be extremely costly leading to the
withdrawal of brands from the market and damage to the company’s
reputation.
Meanwhile Glanbia must be extremely relieved by the decision after spending 2 years of intensive research and over €15 million on the launch of their latest brand intended to revive the company’s stagnant market. It would have been advisable to run a trade mark search before embarking on this latest marketing campaign.