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Yoghurt is Yoghurt

snIPpets – January 2013

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This article was first published in Intellectual Property Magazine, 1 Dec 12

In the recent first instance decision of Nutrichem diät+ pharma GmbH ("Nutrichem") v Compagnie Gervais Danone ("Danone"), the Controller for the Irish Patents Office revoked the trade mark ACTIVIA for virtually all goods covered by its registration save for a limited range of goods in class 29.

Background

Danone is a subsidiary of the French corporate group, Groupe Danone, one of the global leaders in the market of fresh dairy products. Danone is the registered proprietor of the trade mark ACTIVIA, Irish Registration No. 219362 covering a wide range of goods in classes 29, 30 and 32. On 5 September 2011 Nutrichem, by virtue of section 51 of the Trade Marks Act 1996 ("the Act"), applied to have the registration revoked on the basis of non-use.

Nutrichem operates in the fields of food supplements and sport nutrition and is the registered proprietor of Community trade mark Application No. 3423316 in classes 5, 29 and 32 for the mark ACTIVE (Stylised) which has been opposed by several entities, including Danone. It therefore seems likely that Nutrichem's revocation action has been brought in retaliation to Danone's opposition against its own Community trade mark application.

In Ireland, under section 51 of the Act, a trade mark may be fully or partially revoked if, within the period of five years following the date of publication of its registration, the mark has not been put to genuine use within the Republic of Ireland. 

The application for the registration of the ACTIVIA mark was filed on 19 September 2000. The registration was published in the Journal on 17 January 2002. In Ireland the non-use period is calculated from the publication date of the registration in the Journal. In contrast, in the case of Community trade marks, the time frame runs from the date of registration. Danone was therefore required to prove that the ACTIVIA mark had been used in relation to all of the goods for which it was registered within the period of five years following the date of publication of the registration, namely 17 January 2002.

In the recent first instance decision of Nutrichem diät+ pharma GmbH ("Nutrichem") v Compagnie Gervais Danone ("Danone"), the Controller for the Irish Patents Office revoked the trade mark ACTIVIA for virtually all goods covered by its registration save for a limited range of goods in class 29.

The Arguments of the Parties

The essence of Nutrichem's argument was that "Yoghurt is yoghurt, whether it is thick and eaten with a spoon or thin and pourable" and therefore other than yoghurt, all other goods listed in the specifications under classes 29, 30 and 32 should be revoked. 

Danone rejected this as an oversimplification and argued that some of the ACTIVIA products could in no way be simply classified as yoghurt, even if they were yoghurt based products.  Danone used the ACTIVIA "Intensely Creamy" range as an example of one such yoghurt-based product. Danone also insisted upon the fact that pouring yoghurt could not be classified simply as yoghurt on the basis that it could also be used as a substitute to milk or as a base for smoothies and other non-alcoholic beverages. Accordingly, Danone argued that its use was broader than simply yoghurt.

Decision

On 19 June 2012 the Controller notified the parties of his decision to revoke the ACTIVIA mark in respect of all goods with the exception of dairy products, namely yoghurts, drinking yoghurts, mousses, milky deserts in class 29.  On the 23 August 2012 the reasons for this decision were made known to the parties following a request for written grounds by Nutrichem.

Danone provided no evidence of use in respect of class 30 and therefore the Controller was quick to revoke class 30 in its entirety. 

However a significant amount of evidence was provided by Danone in regards to classes 29 and 32. This evidence included samples of print advertisements and promotional coupons, photographs of point of sale materials and even a schedule outlining extensive TV advertising. This was duly noted by the Controller who accepted that Danone had provided considerable evidence not only of genuine use of the ACTIVIA mark in relation to certain goods, but also of its strong reputation and ample goodwill.  He however went on to note that "Reputation and goodwill are not sufficient to overcome an application for revocation that is grounded on non-use.  The proprietor must put the mark to use for each good for which it is protected…"

Where evidence of use was not provided for a good that appeared in the specification, that particular good would accordingly be revoked.  The Controller accordingly devised a "fair specification" with a firm focus on the nature of the trade and on how, practically speaking, a given product is in use for trade purposes. 

A fair Specification

The Controller first dealt with the evidence of use in regards to Class 32 specifically in relation to the following goods: Alcohol free drinks consisting partially of dairy products, alcohol free drinks consisting partially of milk starter cultures

Class 32 includes mainly non-alcoholic beverages. Therefore the Controller had to consider whether drinking yoghurt products, for which ample evidence of use had been provided by Danone, could be classified as Alcohol free drinks consisting partially of dairy products, or alcohol free drinks consisting partially of milk starter cultures. The Controller decided that they could not be classified as non-alcoholic beverages on the following basis:

"The trade mark registration system is based on classifying goods into fields to which, in principle they belong.  It is not the case that goods must be classified according to all possible descriptions or uses.  The classification must be based on a fair and reasonable categorisation, according to the normal purpose or function, as defined by the Nice Classification."

However, the Controller was quick to distinguish multi-composite products from this principle, citing a clock-radio product by way of example. A clock-radio could quite rightly be classified under two separate classes, one clock related and the other radio related. On the contrary the Controller was of the view that drinking yoghurt should not be classified under class 32 as a non-alcoholic beverage for the same reasons that it should not be classified under class 3 as a beauty product simply because it can be used as such. The Controller concluded that whilst yoghurt is both non-alcoholic and drinkable, "Yoghurt is yoghurt, no matter what use is made of it" and therefore should be classified in 29 as opposed to class 32. Consequently, class 32 was also revoked in its entirety.

Having revoked both Classes 30 and 32 the Controller turned to the remaining goods listed under Class 29. In this class he considered the following "beverage types"; plain or flavoured beverages consisting of milk or dairy products, beverages consisting mostly of milk starter cultures, milky beverages with fruits; plain or flavoured fermented milk products.  The Controller concluded that all these were merely (less effective) descriptions of drinking or pouring yoghurt, and given that drinking yoghurt itself was already listed as a good under Class 29, these descriptions were redundant and therefore should be revoked.

Despite his "yoghurt is yoghurt" conclusions, the Controller agreed with Danone, that to define all ACTIVIA products  as yoghurts was too simplistic and that certain products such as the "single pot" and "intensely creamy" ranges could reasonably be described as milky deserts and mousses particularly given that their packaging (produced as evidence of use) made no reference to yoghurt.

Comment

The decision to revoke the registration in classes 30 and 32 and to limit class 29 was arguably, on the whole, a fair one.  The specification, in its amended form, served as an accurate reflection of the goods for which genuine use of the ACTIVIA mark had been proved. By virtue of its registration for "drinking yoghurt" in Class 29, Danone will arguably continue to enjoy some protection and be in a position to challenge similar or identical marks for "beverages" on the basis that "drinking yoghurt" and "beverages" are similar goods.

The decision serves as a useful reminder that in the context of revocation proceedings, even the biggest brands who enjoy extensive reputation and high levels of goodwill, will be vulnerable to non-use challenges where their registrations have been filed too broadly and are not in use for all of the goods covered in the registration.

Leighton Cassidy, Partner and Caroline Bass, Trainee Solicitor in the IP protection and enforcement group at Field Fisher Waterhouse LLP.

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