Nestle loses ‘Dairy Dairy’ battle

NESTLE Trinidad and Tobago Limited on Wednesday lost its court battle against Dairy Distributions Limited over the use of trade marks.  Nestle was also ordered to pay the cost for senior and junior counsel. The action was brought by Nestle against Dairy Distributors on February 25, 2003, for the court to expunge several of its trade marks which are described as “Dairy Dairy” and “Dairy Dairy the Milky Milk,” labelled pure word marks. A challenge was also made to the device of a white “pour and splash” used in combination with the word mark Dairy Dairy, on the basis that it is a device which is common to the trade of a non-distinctive character and contrary to the Trade Marks Act.

Nestle’s action was in retaliation to an earlier action brought against the company by Dairy Distributors on February 24 of the same year, when Madame Justice Amrika Tiwary-Reddy had refused to grant an injunction against Nestle for alleged infringement of Dairy Distributors’ trade marks. In a written judgment delivered in the San Fernando High Court on Wednesday, Justice Peter Jamadar ruled that the word Dairy Dairy is a single distinctive compound word, which identifies the product of the manufacturer (Dairy Manufacturers Limited) in a distinctive and unique way.  The judge also ruled that it was highly fictitious to attempt to dissect the word into constituent parts.

According to Jamadar, assuming the word Dairy standing alone generically designated milk products, it did not necessarily mean that a repetition of the word equally designated milk products.  In fact, he said, repetition changed everything about the nature, meaning and character of the mark.  In his opinion, this mark was simply an invented construction that was not part of spoken or written English, and not commonly used or understood to describe milk or milk related products.

Jamadar said the combination marks consisted of “getups” which include the word-mark Dairy Dairy, various combinations of colours and the white pour and splash.  This combination, he said, were distinctive in character and that distinctiveness was supported by the evidence of market research. The court refused to expunge any of the marks, but in the interest of certainty and clarity and to avoid any confusion, ordered that the Register of Trade Marks be varied with respect to all Dairy Distributors’ marks.  The marks are to reflect a disclaimer to the exclusive use of the word “Dairy” standing alone, separate and apart from the said trade marks. 

Regarding the combination marks, the court ruled that they shall remain on the Register on the condition that registration will give no right to the exclusive use by Dairy Distributors of a white pour and splash separate and apart from the marks. Nestle, was granted leave to appeal on the question of cost. Nestle was represented by attorneys Neal Bisnath and Ravi Nanga.  Attorneys Seenath Jairam SC and Kerwyn Garcia appeared for Dairy Distributors.