Compagnie Gervais Danone v Glanbia Foods Society Ltd

• Jurisdiction: Ireland
• Judge: Macken, J.
• Judgment Date: 19 May 2010
• Neutral Citation: [2010] IESC 36
• Court: Supreme Court
• Docket Number: [S.C. No. 141 of 2007]
• Date: 19 May 2010

[2010] IESC 36

THE SUPREME COURT

Hardiman, J.

Fennelly, J.

Macken, J.

[S.C. No. 141 of 2007]

Compagnie Gervais Danone v Glanbia Foods Society Ltd

BETWEEN:

COMPAGNIE GERVAIS DANONE

PLAINTIFF/APPELLANT

AND

GLANBIA FOODS SOCIETY LIMITED

DEFENDANT/RESPONDENT

TRADE MARKS ACT 1996 S51(1)(A)

TRADE MARKS ACT 1996 S8(4)(B)

TRADE MARKS ACT 1996 S52(1)

ANSUL BV v AJAX BRANDBEVEILIGING BV 2005 CH 97 2004 3 WLR 1048 2003 ECR I-2439 2005 2 CMLR 36

TRADE MARKS ACT 1996 S99

EEC DIR 89/104 ART 12(1)

TRADE MARKS ACT 1996 S51(1)

MERZ & KRELL GMBH & CO v DEUTSCHES PATENT - UND MARKENAMT 2001 ECR I-6959

EEC DIR 89/104 ART 10(1)

ARSENAL FOOTBALL CLUB PLC v REED 2002 ECR I-10273

HAY v O'GRADY 1992 1 IR 210 1992 ILRM 689 1992/2/502

TRADE MARKS ACT 1996 S51

TRADE MARKS ACT 1996 S37(2)

TRADE MARKS ACT 1996 S8

EEC DIR 89/104 ART 3

TRADE MARKS ACT 1996 S8(1)(C)

EEC DIR 89/104 ART 3(1)(C)

TRADE MARKS ACT 1996 S8(1)

SUNRIDER CORP v OFFICE FOR HARMONISATION IN THE INTERNAL MARKET (TRADEMARKS & DESIGNS) (OHIM) 2006 ECR I-4237

HIGH & MIGHTY LTD v ARNOTTS LTD UNREP TRADE MARKS ACT 1996 DECISION IN HEARING 7.3.2006 (TRADE MARK NO 149294)

TRAVEL HURRY PROJECTS LTD v STEFCOM SPA UNREP TRADE MARKS ACT 1996 DECISION IN HEARING 21.3.2005 (TRADE MARK NO 159959)

INTELLECTUAL PROPERTY

Trade mark

Registration - Characterisation of use - Use in relation to goods - Ingredient - Whether use of registered trade mark amounted to genuine use - Meaning of requirement of genuine use in relation to the goods for which trade mark is registered - Purpose of registration - Whether trade mark registered in bad faith - Meaning of bad faith in context - Ansul BV v Ajax Brandbeveiliging BC (Case C-40/01) [2003] ECR I-2439, Sunrider Corporation v Office for Harmonisation in the Internal Market (OHIM) (Case C-416/04) [2006] ECR I-4237 and La Mer Technology Inc v Laboratoires Goemar SA (Case C-259/02) [2004] ECR I-1159 followed - Council Directive 89/104/EEC - Trade Marks Act 1996 (No 6), ss 8(1)(c) and 51(1)(a) - Trade Marks Rules 1996 (SI 199/1996) - Plaintiff's appeal allowed (141/2007 - SC - 19/5/2010) [2010] IESC 36

Compagnie Gervais Danone v Glanbia Foods Society Ltd

Facts: The proceedings were by appeal from a decision of the High Court where the Court had held that the plaintiff had not made any genuine use of a trademark (ESSENSIS No. 211092) and that the respondent was entitled to an order for its revocation pursuant to s. 51(1)(a) Trade Marks Act 1996. It was pleaded that the application for the registration of the trademark had been made in bad faith. On appeal, it was alleged that the trial judge had erred in her findings inter alia as to the genuineness of the use of the trademark.

Held by the Supreme Court per Macken J. (Hardiman, Fennelly JJ. Concurring), that it was not necessary to involve further caselaw relating to the correctness of the transposition of the Directive into Irish law. The Court was satisfied that the appellant established before the High Court sufficient facts as to the use of the trademark ESSENSIS upon which the learned High Court judge ought to have concluded that the use of that mark was a genuine trademark use in respect of the products for which it was registered. The learned High Court judge had misdirected herself in law otherwise. The Court would set aside the judgment and order of the High Court and substitute an order refusing the respondent's application made pursuant to s. 51(1)(a) of the Act of 1996.

Reporter: EF.

1 JUDGMENT delivered on the 19th day of May, 2010 by Macken, J.

2 This is an appeal from the judgment of the High Court (Finlay Geoghegan, J.) delivered on the 20 ^th day of April, 2007 and the Order made in consequence thereof, by which judgment the learned High Court judge held that the plaintiff had not made any genuine use of the trademark ESSENSIS No. 211092 registered, inter alia, in Class 29, for any goods in respect of which it was registered, for the statutory period of five years from the date of publication of the registration, and that the respondent was entitled to an Order for its revocation under s.51(1)(a) of the Trade Marks Act, 1996 ("the Act of 1996").

Background

3 By a Statement of Claim delivered on the 28 ^th March, 2006 the plaintiff, as proprietor of the trademark registration, pleaded that the defendant had infringed the plaintiff's registered trademark in the State. It was pleaded that the defendant had used the trademark, or sign, ESSENCE, being a mark or sign allegedly similar to the registered trademark of the plaintiff, in relation to goods identical with, or similar to, those for which the plaintiff is the registered trademark proprietor, in circumstances where there exists a likelihood of confusion on the part of the public, including a likelihood of association of the mark or sign ESSENCE with the registered trademark. The plaintiff claimed this had caused, and was likely to continue to cause, loss, damage, inconvenience and expense. The plaintiff sought, in the usual way, an injunction restraining the defendant from infringing the plaintiff's trademark, registration number 211092, and consequential orders.

4 By a Defence and Counterclaim delivered on the 13 ^th April, 2006, while admitting that the plaintiff was the registered proprietor of the trademark in question, the defendant denied that the plaintiff had any legitimate entitlement to maintain the trademark registration because, it was pleaded, within a period of five years following the date of publication of its registration, the registered trademark had not been put to genuine use in the State by or with the consent of the plaintiff in relation to the goods for which it is registered. The defendant acknowledged being aware that the plaintiff markets yogurt products under two trademarks, ACTIVIA and DANONE, and the defendant believed, according to the Counterclaim, that the plaintiff, on the packaging for its ACTIVIA product, had referred to the presence of an active ingredient called "bifidus essensis" which the defendant stated it understood to be a strain of bacterial culture claimed to aid digestion.

5 While not acknowledging any use of or reference to "bifidus essensis" on any of the products of the plaintiff marketed, sold or distributed in the State, it was alleged by the defendant that such use of the plaintiff's trademark was not genuine use in relation to any of the goods for which ESSENSIS was registered. The defendant pleaded that the words "bifidus essensis" could not be said to signal the origin of the registered product to the consumer. Further, the word ESSENSIS was not used on its own, but was all times used in conjunction with the word "bifidus" to designate one of the ingredients of goods sold under the trademarks ACTIVIA and DANONE. The defendant pleaded that grounds for revocation of the trademark existed from at least the date of publication of the registration, if not earlier, and invoked the provisions of s.51(1)(a) in pleading that revocation should take effect from the date of registration.

6 Further, it was pleaded that the application for registration of the trademark had been made by the plaintiff in bad faith, contrary to s.8(4)(b) of the Act of 1996 and for that reason also it should be declared invalid pursuant to s.52(1) of the same Act. This latter plea was based on an allegation that the plaintiff never had any "bona fide" intention of putting the trademark to use in the State in relation to the goods for which it was registered.

7 In consequence of the matters pleaded in the Counterclaim, the respondent sought two reliefs:

8 1. Revocation of the registered trademark 211092, pursuant to s.51(1)(a) of the Trade Marks Act, 1996, on the ground that, within the period of five years, following the date of publication of its registration, the trademark ESSENSIS had not been put to genuine use in the State in relation to the goods for which it was registered; and

9 2. A declaration of invalidity of that registered trademark pursuant to s.52(1) of the Act of 1996 on the basis that the trademark ESSENSIS was registered in bad faith, contrary to s.8(4)(b) of the Act of 1996, the plaintiff never having had any bona fide intention of putting ESSENSIS to use in the State.

10 In the usual way in which these matters are disposed of, an Order was made in the proceedings directing trial of the above two reliefs sought on the Counterclaim prior to hearing the infringement issue. This is a standard method by which such Counterclaims are disposed of in many jurisdictions, because if the Counterclaim is successful then there is no requirement to embark on any investigation as to alleged infringement of the registered trademark. The matter proceeded with oral evidence, extending over several days, by way of cross-examination on affidavits or on witness statements from both parties.

11 By her judgment, the learned trial judge made several findings. I propose to deal with these very briefly before considering the grounds of appeal and the submissions made in the appeal itself. In short, she found that the onus being on it to do so, the appellant had failed to establish any genuine use in the State of the trademark ESSENSIS in respect of yogurt; that such use as had been made of the trademark was in relation to a culture within the plaintiff's yogurt, but for which no registration existed; that it was appropriate to distinguish the use position in this case from that under consideration by the European Court of Justice in case C-40/01 Ansul B.V. v. Ajax Brandbeveiliging B.V. [2003] ECR I-2439; that the defendant was entitled to succeed on its claim to revocation of the registered trademark, but was not entitled to succeed on its claim that it had been registered in bad faith.

12 From...