The Mark in use will be in the colour RED corresponding with cyan 0, magenta 91, yellow 100, black 23, as applied to the packaging of milk and dairy products. - 244516

• Administrative Decision Number: 244516
• Date: 08 September 2021
• opponent: Glanbia Ireland designated Activity Company
• Section: Trade Marks Act, 1996 - 2018 - Current

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TRADE MARKS ACT, 1996

Decision in Hearing

IN THE MATTER OF an application for the revocation of the registration of Trade

Mark No. 244516 and in the matter of the registered Proprietor’s opposition thereto.

STRATHROY DAIRY (ROI) Applicant for Revocation

GLANBIA IRELAND DESIGNATED ACTIVITY COMPANY Proprietor

The registered trade mark

1. Glanbia Ireland Designated Activity Company (hereinafter “the Proprietor”) of

Ballyconra, Ballyragget, Co. Kilkenny, Ireland is the registered Proprietor of the

Trade Mark no. 244516 in respect of “Milk and milk products” in Class 29.

2. The mark is recorded on the Trade Mark Register as “The Mark in use will be in

the colour RED corresponding with cyan 0, magenta 91, yellow 100, black 23, as

applied to the packaging of milk and dairy products”. This description represents

the following colour:

(hereinafter “the Red Mark”).

3. The application was filed 15 September 2010 and the publication of the

registration of the mark appeared in Journal No. 2170 on 20 July 2011.

4. On 20 April 2020 Strathroy Dairy (ROI) of 6 Bath Avenue Gardens, Sandymount,

Dublin 4, Ireland (hereinafter “the Applicant”), made an application for the

revocation of the registration pursuant to the provisions of Section 51 of the

Trade Marks Act, 1996 (“the Act”).

5. The Proprietor filed a Notice of Opposition dated 9 November 2020, an

accompanying Statutory Declaration of even date, of Mr Eoin Doyle, Head of

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Marketing and Product Management of the Proprietor and six exhibits, labelled

“Exhibit 1” to “Exhibit 6”. The Applicant elected to file written submissions in lieu

of attending the Hearing. The Proprietor attended the Hearing on 7 July 2021.

6. Acting for the Controller, I decided to revoke the registration in respect of “milk

products” and to alter the registration in respect of “milk” to “fortified milk, milk

enriched with vitamins and minerals”. In so deciding, I considered carefully all

the materials and arguments advanced by both parties and relevant caselaw

and precedents. I will refer to these materials as and when appropriate and

necessary below.

7. The parties were informed of my decision by way of letter dated 14 July 2021. I

now state the grounds of my decision and the materials used in arriving thereat

in response to a request by the Applicant filed on 6 August 2021.

The Application for Revocation

8. The Applicant grounds its application for revocation on the following:

i. That within the period of five years following the date of publication of the

Registration, the said trade mark was not put to genuine use in the State, by

or with the consent of the proprietor in relation to milk products for which the

Trade Mark is registered and that there are no proper reasons for non-use.

For the purpose of clarity the term 'milk products' include such goods as

whey, cream, butter, buttermilk, butteroil, caseins, anhydrous milk fat

(AMF), cheese, yogurt, kephir, etc.

ii. That use of the Trade Mark in connection with 'milk products' has been

suspended for an uninterrupted period of five years prior to the date of the

current application and that there are no proper reasons for such non-use.

iii. That in consequence of the activity or inactivity by the proprietor, the trade

mark has become a common indicator within the trade to designate a kind

(type) of milk, goods which are covered by the registration and therefor no

longer capable of distinguishing milk originating from the Proprietor from

milk originating from other undertakings.