La Mer Technology Inc v Laboratoires Goemar SA (January 2004)

Date

27 January 2004

Legislation

Articles 10(1) and 12(1) of Directive 89/104/EC (the Trade Marks Directive)
s.46(1) Trade Marks Act 1994

Keywords

Trade Marks; Revocation; Non-Use; Meaning of Genuine Use

Solicitors:

Not Specified

Judges:

J.N. Cunha Rodrigues (Acting President of the Third Chamber); J-P Puissochet, F Macken

Court:

European Court of Justice (3rd Chamber)

Reported:

[2004] F.S.R. 38, [2004] E.T.M.R. 47

Summary:

Article 10(1) of the Trade Marks Directive states:

"If, within a period of 5 years following the date of the completion of the registration procedure, the proprietor has not put the trade mark to genuine use in the Member State in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trademark shall be the subject to the sanctions provided for in this Directive, unless there are proper reasons for non-use."

Article 12(1) of the Trade Marks Directive States:

"A trade mark shall be liable to revocation if, within a continuous period of five years, it has not been put to genuine use in the Member State in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use….."

Proceedings were brought in the UK to revoke the trade mark LABORATOIRE DE LA MER (registered for goods in classes 3 and 5) on the grounds of non-use under s.46(1) TMA 1994 (which applies Article 10(1)). The matter reached the High Court where the mark was revoked in relation to goods in Class 5. However, there appeared to have been a small amount of use in relation to goods in Class 3. The Court therefore made a reference to the ECJ on the interpretation of "genuine use".

Decision:

The key points decided by the ECJ were that:

• there would be genuine use of a trade mark where it was used in accordance with its essential function, namely to guarantee the identity of the origin of the goods or services for which it was registered;
• In particular genuine use of the mark entails use of the mark on the market for the goods or services protected by that mark in order to create or to preserve an outlet for those goods or services, and not just internal use by the undertaking concerned or token or sham use. Use of the mark must therefore relate to goods already marketed or about to be marketed and for which preparations by the undertaking to secure customers are already under way; and
• Regard had to be given to all the known facts and circumstances to establish whether the use was genuine and in particular whether the mark had been used in the course of trade. In particular the court should have regard to whether such use was warranted as to maintain or create a share in the market in which the relevant goods or services were concerned, the nature of those goods or services, the characteristics of the market. Where the use served a real commercial purpose even minimal use, such as the importation of goods by a single customer could be sufficient to establish genuine use.

It is important to note from this decision that under certain circumstances a s.92 prosecution may be vulnerable to revocation because the mark relied upon has not been used in connection with the goods and services for which it is registered.