Gerber Foods International Ltd v Gerber Products Co
Date
20 December 2002
Legislation
Trade Marks Act 1938, s. 26
Keywords
Revocation on grounds of non-use; bona fide use
Counsel
Mr D Young QC, Mr C Birss, Mr M Bloch QC, Mr M Edenborough
Solicitors
Bird & Bird; Laytons
Judge
Auld, Brooke, Carnwath LJJ
Court
Court of Appeal
Reported
[2003] RPC 34
Summary
This was a second tier appeal from the decision of the Hearing Officer to remove two of Gerber Products Company ('Products') from the Register of Trade Marks on the grounds of lack of 'bona fide use' of the marks for five years up to a month before the application.
In the first appeal, which was a review under s.51 of the Trade Marks Act 1938, the Vice Chancellor held that the Hearing Officer had erred in his interpretation of the meaning of 'bona fide use'. Products had relied upon two uses, the first a test marketing exercise, the second, sales of its products (baby foods) to five US Air Force Bases in England. The Appellant/Applicant, Gerber Foods International Ltd ('Foods') appealed the Vice Chancellor's decision, on the grounds that the bona fide test was an objective test of 'genuineness' judged by ordinary commercial standards and not, or not just, a subjective test of honest intent.
Decision:
After reviewing the authorities, it was held that there was no all-purpose definition of bona fide use - each case needed to be decided on its own particular facts. 'Bona fide use' was use that was honest or genuine in the ordinary day-to-day meaning of the words, and 'not pretended'. It did not have to be use on a substantial scale judged against commercial standards. Considerations of substantiality, ordinary commercial standards or of establishing a market were relevant to, but not definitive of, whether the use in question was honest.
There were two ingredients of 'bona fide use' in section 26(1)(b):
- some use in the course of trade of a mark referable to the class in respect of which it is registered; and
- an honest intention to make that use - that is a use that was not a pretence.
There was no additional test of 'objective genuineness'.
On the facts, Products test marketing exercise, consisting of the supply to six stores of a selection of seven different baby foods and the sale of the jars of food for just under $300, although insubstantial, was bona fide.