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

Date

21 December 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

Counsel

James Mellor for La Mer, Guy Tritton for Laboratoires Goemar

Solicitors:

Lane & partners for La Mer; Withers LLP for Laboratoires Goemar

Judges:

Blackburne J.

Court:

High Court (Chancery Division)

Reported:

[2004] EWHC 2960, (2005) 28(3) I.P.D. 28014

Summary:

This decision was subsequent to the European Court of Justice decision in this case - see the separate ECJ case summary for background details.

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 The matter reached the High Court where the mark was revoked in relation to goods in Class 5.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". The ECJ responded by way of reasoned order and with the benefit of this order the matter came back before the High Court for determination.

The Appellant argued that for use of a mark to be "on the market" and not "internal or sham" as required following the ECJ’s Order, it must be directed to and come to the attention of the consumer or end-user, and that in the instant case no such use had been proved, as the goods had only got so far as the agent who was responsible for putting the goods on the market.

The Respondent submitted that when stating that "internal, sham, or token use" was not "genuine" use, the ECJ was simply stating that the use of the mark must be use as a trade mark i.e. a guarantee of the identity of the origin of the goods, rather than mere descriptive use. The ECJ does not require the mark to have come to the attention of the end-user or consumer.

Decision:

• Use which must be shown to establish "genuine use" is use which reflects the essential function of a trade mark, namely to act as a guarantee of the identity or origin of the goods or services to the consumer or end-user by enabling him, without any confusion, to distinguish the goods or services from others with a different origin;
• The fact that the proprietor of a mark has every intention of using his mark in the market for the goods or services protected by it in itself is not sufficient. The assessment of genuine use is objective;
• "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;
• It is not sufficient to say that use has occurred which is not purely token or purely internal, the ECJ’s exposition of the law goes much further than saying genuine use is more than "token or internal use".
• The fact that £800 worth of products bearing the mark were imported into the UK and paid for by the importer who, whether as agent or distributor, was to put them on the market with a view to their sale to end-users but, in the event never did so, does not qualify as "genuine use" as such use has all the attributes of internal use.

Accordingly, the appeal succeeds and the whole of the Class 3 registration should be revoked.

Note: this decision has been appealed and is due to be heard before the Court of Appeal in July 2005