Danone loses court action against Glanbia

French dairy giant Danone has lost its High Court action against Irish dairy company Glanbia over the introduction by Glanbia of Yoplait Essence yogurt.

Danone had sued the Irish company, alleging infringement of its Irish trademark number 211092 Essensis, arising from the use by Glanbia of the Yoplait Essence brand name on a range of probiotic yogurts produced by Glanbia in Inch, Co Wexford.

Glanbia denied the claims and in a counterclaim contended that Danone had not put its Essensis Irish-registered trademark to genuine use in Ireland within the past five years.

On that basis, it sought to have the mark revoked.

In a reserved judgment yesterday Ms Justice Mary Finlay Geoghegan found that the Essensis trademark should be revoked on grounds that it had not been put to genuine use within the State in relation to yoghurt, being the only relevant goods for which it was registered, within the five years since its registration was published in July 2000.

In light of that finding, the infringement claim will not now proceed.

In a statement afterwards, Glanbia welcomed the court's decision and said that it looked forward to continuing to drive the Yoplait Essence range.

Danone Ireland said that it was "very disappointed" with the court's finding but said it would make no further comment until it had reviewed the ruling and considered all its legal options.

In her judgment, Ms Justice Finlay Geoghegan said that the Essensis trademark was used by Danone in packaging, marketing and advertising materials for yoghurt sold under the brand names "Bio Activia" or "Activia".

However, it was always used in conjunction with the word "Bifidus" and always as the name of an ingredient of the yoghurt, namely a probiotic culture.

The trademark Essensis, either on its own or in conjunction with Bifidus, was never used to designate the yoghurt but rather an ingredient of the yoghurt, she said.

The probiotic culture called Bifidus Essensis was unique to Danone and its claimed health benefit was part of Danone's marketing and promotional strategy to distinguish the Bio Activia or Activia yoghurt from its competitors.

Ms Justice Finlay Geoghegan was not satisfied that the trademark Essensis was used as a trademark in relation to yoghurt, the judge said.

Its use was unequivocally confined to referring to an identified ingredient of the yoghurt as distinct from the yoghurt itself.

Genuine use as a trademark for a specified product required that the trademark be applied in such a way that it was, at minimum, capable of being understood as referring to that product, she said.

In this case, Danone had not provided genuine use of the Essensis trademark in relation to yoghurt.

However, Ms Justice Finlay Geoghegan added that Glanbia had adduced no evidence to support its additional claim of bad faith by Danone in its application for registration of the trademark, and she would dismiss that aspect of Glanbia's counterclaim.