Laboratories Goemar SA v La Mer Technology Inc ('LABORATOIRES DE LA MER' trade mark)

Date

19 December 2001

Legislation

Trade Marks Act 1994 s. 46
Trade Marks Directive 89/104 Arts. 10, 12

Keywords

revocation; medical use; genuine use

Counsel

Guy Tritton, James Mellor

Solicitors:

Withers; Lane & Partners

Judge:

Jacob J.

Court:

Chancery Division

Reported:

[2002] ETMR 34, [2002] FSR 51

Summary:

La Mer applied for revocation of Goemar's trade mark registered in Classes 3 and 5 on grounds of non-use in the UK over a period of five years. Where non-use is alleged the burden of proof lies on the proprietor to prove use. As to the registration in Class 5 it was held that there had been no use of the mark in relation to 'dietetic products for medical use', because the Goemar's vitamin supplements were not 'medicines', since they were not for the treatment of disease.

As to the Class 3 registration, the question of genuine use is important because of the public interest in not clogging up the Register. Unused trade marks are obstacles to trade. However, the meaning of 'put to genuine use' is not clear, as to whether it refers to the quality of the use (genuine use as opposed to a sham) or also the quantity (genuine meaning substantial).

Decision

Though the judge expressed the opinion that the former is the correct interpretation, but that the smaller the use the more carefully it would have to be proved, this question was referred to the ECJ.