French dairy giant Danone has won its legal action against Irish dairy company Glanbia over the introduction by Glabia of the Yoplait Essence yoghurt product.
Danone had claimed Glanbia infringed Danone’s Irish trademark Essenis over the use of the Yoplait Essence brand name on a range of probiotic yoghurts produced by Glanbia in Inch, Co Wexford.
Glanbia had denied the claims and, in a counterclaim, contended Danone had not put its Essensis Irish registered trade mark to genuine use within Ireland within the past five years. On that basis, it sought to have the mark revoked.
In the High Court in 2007, Ms Justice Mary Finlay Geoghegan found the Essensis trademark should be revoked on grounds 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 did not proceed.
The Supreme Court upheld Danone’s appeal against the decision on revocation and quashed that ruling.
Giving the three judge court’s unanimous judgment, Ms Justice Fidelma Macken said Danone had established sufficient facts about its use of the Essensis trademark upon which the High Court should have concluded the use of that trademark was a genuine use in relation to the yoghurt products.
She ruled the High Court had, through an “unduly narrow” application of the principles related to trademark use, misdirected itself in law when applying the appropriate principles to the evidence in this case.
On that basis, she set aside the High Court decision and made an order refusing Glanbia’s application for revocation of the Essensis trademark. The court then adjourned the matter to allow the sides consider the judgment.
