|Merpel examines the evidence ...|
The decision in question is in the application by Nutrichem Diät + Pharma GmbH to revoke a trade mark that is well known in yoghurt-eating circles, the venerable ACTIVIA word mark. This mark was registered in Ireland in the name of its proprietor, Compagnie Gervais Danone ('Danone'), and it was worked there by a company within the Danone group with the not-so-exciting name of Danone Limited.
So what was this action all about? Danone had actually registered ACTIVIA for a large range of food and drink products in Classes 29, 30 and 32. Nutrichem applied to revoke this mark on the ground that it had not been in use in the Republic of Ireland during an uninterrupted period of five years, there being no reasonable grounds to justify such non-use.
In support of its contention that the ACTIVIA trade mark really had been used, Danone submitted, among other things, evidence of use of the mark in respect of a product known as pouring yoghurt. Danone maintained that this was evidence of use in respect of various beverages in Class 29 and of ‘alcohol free drinks consisting partially of dairy products, alcohol free drinks consisting partially of milk starter cultures’ in Class 32
Dermot Doyle, on behalf of the Controller, held that partial revocation would be ordered in respect of all goods in Class 30 and Class 32, and for all goods in Class 29 with the exception of dairy products, namely yoghurts, drinking yoghurts, mousses and milky desserts.
First to fall was the registration in respect of Class 30: Danone confined its evidence of use to goods in classes 29 and 32 alone, but did not contest the application for revocation in respect of any goods in Class 30. But what evidence of use was submitted -- and how far could it be stretched?
On the plus side for Danone, it was abundantly clear that the ACTIVIA mark had been used extensively in the State during the periods in question -- and that the mark had gained a strong reputation and a high level of goodwill. Be that as it may, reputation and goodwill are not of themselves sufficient to overcome an application for revocation that is based on non-use. If the proprietor fails to put the mark to use for each good for which it is protected, said the Controller's representative on Earth, even such a well known mark remains liable to be revoked in respect of goods for which use has not been demonstrated.
So what exactly was the evidence? ACTIVIA had been used in respect of yoghurt and yoghurt-based products, which properly belong in Class 29. This being so, the registration could remain on the Register for those products.
As for the goods in Class 32 for which the mark was registered and for which evidence of use was submitted, material was offered in respect of only ‘alcohol free drinks consisting partially of dairy products, alcohol free drinks consisting partially of milk starter cultures’. Did use in respect of "pouring yoghurt" count as use of those goods too? No, said the Diligent Doyle, who explained the function of the trade mark registration system in simple terms: it is based on classifying goods into fields to which, in principle, the goods belong. Goods do not however have to be classified according to all possible descriptions or uses. Rather, the classification must be based on a fair and reasonable categorisation, according to the goods' normal purpose or function, as defined by the Nice Classification.
What of multipurpose products? They might, the hearing officer explained, mean that a multipurpose composite product may correctly be classified in all the classes that correspond to any of its functions: thus a clock-radio might be correctly registered in either or both of the two different classes that deal with radios and clocks. But, he observed, while yoghurt is also used as a face mask in beauty treatment it is not, per se, a beauty product. This is the reason why yoghurt does not appear in the list of goods covered in Class 3 of the Nice Classification which deals with beauty products. In essence yoghurt is yoghurt, no matter what use is made of it.
On this basis, while milk clearly is an alcohol-free drink, it does not belong in Class 32, which is specific to other types of non-alcoholic drinks (e.g. mineral and aerated waters and fruit juices). Milk belongs in Class 29 which concerns itself, inter alia, with milk and milk products. Likewise, while a “pouring yoghurt” does not contain alcohol and may be drinkable, it is fundamentally a yoghurt and, for classification purposes, it belongs properly in Class 29, not Class 32. Accordingly, in the case of ACTIVIA, no use of the trade mark had been made on any goods which were "particular to and proper to Class 32" and the registration must be revoked in respect of all goods in that class.
Returning now to the list of goods in Class 29 for which ACTIVIA was registered, that list again included a number of beverage types, but the only substance for which evidence of use was offered that could, in any way, be described using any of these beverage types was ACTIVIA pouring yoghurt. However, since “pouring yoghurt” was itself mentioned in the specification (and there is no better way of describing pouring yoghurt) those other descriptions were redundant.
To conclude, in deciding on a fair specification for the bits of ACTIVIA that weren't going to be revoked, Dermot Doyle ruled that the registration should still stand for ‘dairy products, namely, yoghurts, drinking yoghurts, mousses, milky desserts’, all in Class 29.
The IPKat, who is very fond of yoghurt, has been lapping this all up excitedly. Once upon a time he used to set students problems involving the classification of multipurpose goods, a topic which, he feels, still has plenty of mileage and which now demands fresh attention in the wake of the decision of the Court of Justice of the European Union in Case C-301/10 IP TRANSLATOR.
How to spell yoghurt/yogurt here, here and here
Yoghurt face masks here, here and here
Unsuccessful quest for aphrodisiac yoghurt here ...
... but better news for laboratory rats here