In early 2006 Danone had instituted High Court proceedings claiming that Yoplait Essence shots produced by Glanbia infringed Danone’s Essensis trademark.
Bifidus Essensis had been the brand name for the probiotic culture used exclusively by Danone in its Activia yoghurts. Danone referred to Bifidus Essensis on the packaging and the advertising and marketing materials for the yoghurts.
‘Genuine use’ question
The legal issue between Danone and Glanbia turned on the question of whether this use of the Essensis trademark was genuine in relation to yoghurt products or whether its genuine use extended only to the probiotic culture.
The High Court in Dublin ruled against Danone in April 2007. Ms Justice Mary Finlay Geoghegan found that the Essensis trademark held by Danone should be revoked ruling that it had not been put to genuine use in relation to yoghurt products in Ireland since its registration in 2000.
The Supreme Court has now overturned this ruling concluding that the Essensis trademark was genuine in relation to yoghurt products. It ruled that the High Court had been “unduly narrow” in its application of the principles related to trademark law.
Glanbia response
Reacting to the judgment, Glanbia said it was “surprised and disappointed”. In a statement, the company added: “Glanbia will now review its legal options before deciding how to proceed.”
As for the implications for its Yoplait Essence brand, a Glanbia spokesperson said: “We continue to make and sell Yoplait Essence and no decision about a change to that position has been made.”
Glanbia had introduced the Yoplait Essence yoghurt shots for the Irish market back in back in early 2006 in attempt to improve its position in the value chain and tap into growth in the functional foods market.