Posted online only yesterday was the decision of the Irish Supreme Court (Hardiman J, Fennelly J and, giving judgment for the court, Macken J) of 19 May 2010 in Compagnie Gervais Danone v Glanbia Foods Society Ltd  IESC 36 (thank you, Gemma O'Farrell, for the tip-off).
This is an appeal from a judgment of the High Court (Finlay Geoghegan, J.) which was delivered over three years ago, on 20 April 2007. Danone, which sold ACTIVIA yoghurt under its DANONE house mark, describing that product as containing "bifidus essensis", said Glanbia had infringed its ESSENSIS trade mark by selling ESSENCE yoghurt; the trial judge dismissed the action, held that Danone had not made any genuine use of its Irish trade mark ESSENSIS for the goods in Class 29 yoghurt) for which it was registered for the statutory period of five years from the date of publication of the registration, and revoked the mark for non-use under s.51(1)(a) of the Trade Marks Act 1996. A further defence, that the ESSENSIS mark was registered in bad faith, was rejected.
The Supreme Court allowed Danone's appeal. The trial judge had accepted that the word mark ESSENSIS had been used in the phrase "bifidus essensis", but did not consider (having looked at the relevant Court of Justice case law in Case C-40/01 Ansul) that this use was in relation to yoghurt itself, rather than for a culture which was an ingredient of yoghurt and which was properly categorised within Class 1, and that the use of the mark in this manner was not in accordance with its essential function -- indicating the identity of the origin of yoghurts. She also concluded that genuine use of the mark in respect of yoghurt would require consumers to understand that the mark in question actually related to yoghurt, for which it was after all registered. There was however nothing in law to compel the conclusion that the use of a trade mark in relation to an essential ingredient of a product was not also a use of that same mark in relation to the product itself. Nor was there any basis upon which to draw a distinction between the use of a trade mark in respect of spare parts for a product (as in Ansul) and in respect of its ingredients. Further, the rule in Ansul was not limited to the specific facts of that case -- thus inviting judges to distinguish other cases from it -- but was formulated as a general rule to apply in all cases involving genuine use.
"There are two matters it seems to me, which arise from this argument. The first ... concerns whether ... the phrase “in connection with the goods” in the Directive (or in the case of the Irish legislation “in relation to the goods”) can properly be said to be in any way materially, or even reasonably, different from the phrase “for the goods or services” found in other language versions of the Directive. Although certain dictionary meanings were considered in the course of the exchanges during the hearing of this appeal, I am not at all satisfied that there is any evidence before this Court from which it could be concluded that there is any real distinction, linguistically speaking, between the various phrases used in the different versions of the same Directive, and I do not find either that this was a serious issue in the High Court or one considered by the learned High Court judge in her judgment. Indeed, I am satisfied that the more vague phrase “for the goods or services”, which is in no way limited linguistically, does not, on any reasonable interpretation, necessarily mean “on the products”, if by that phrase is meant physically on the products. Nor is it narrower than either the phrase used in the English language version of the Directive, or in the Act of 1996, as contended for by the respondent"and
"... no real distinction in law can be drawn between the requirements for use as expressed by the phrase “in connection with the goods” or indeed “in relation to the goods” on the one hand, and the phrase “for the goods” on the other hand, and in this judgment I deal with the phrase occurring in the English language version of Article 12(1), as transposed into Irish law by the Act of 1996, as if all three phrases were identical".Let's hope those issues don't arise again.