CFI applies low threshold of proof of genuine use in LA MER Case

In La Mer Technology Inc v Office for Harmonization in the Internal Market (OHIM) (case T-418/03), the Court of First Instance (CFI) has affirmed a decision of the Board of Appeal of OHIM upholding the opposition against the registration of the trademark LA MER.

US company La Mer Technology Inc applied for the registration of the word mark LA MER for cosmetics and toiletries in Class 3 of the Nice Classification. French company Laboratoires Goëmar opposed the registration based on its earlier registered trademark LABORATOIRE DE LA MER for goods in Class 3 (including soaps, perfumery, essential oils, cosmetics and hair lotions).

La Mer Technology argued that the two marks were not sufficiently similar and requested proof of use of the earlier trademark LABORATOIRE DE LA MER. Both the Opposition Division and the Board of Appeal upheld the opposition and concluded that the limited documents provided by Laboratoires Goëmar to show proof of use were sufficient. Furthermore, the Opposition Division and the Board of Appeal took the view that there was a likelihood of confusion between the two marks based on the identity or similarity of the goods.

The CFI dismissed the appeal brought by La Mer Technology.

With regard to the issue of proof of use, the CFI followed recent case law of the European Court of Justice (ECJ), as well as its own case law, and stated that minimal use is sufficient to prove genuine use, provided that "such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark". The CFI concluded that invoices which did not mention the earlier mark were relevant to prove genuine use, in particular for a house brand. Furthermore, the CFI assumed that a small number of invoices bearing invoice numbers which were very far apart indicated that the invoices were submitted only as an illustration. Arguably, the CFI and the ECJ have become more lenient with regard to proof of actual use. It appears that the threshold applied by the EU courts is significantly lower than that used by domestic courts.

With regard to the issue of similarity between the marks, the CFI found that although the visual and phonetic similarities were limited, there is a strong conceptual similarity between LABORATOIRE DE LA MER and LA MER. According to the CFI, the word laboratoire (French for laboratory) indicates the place where the products are designed and is thus of low distinctive value. The term 'la mer' (meaning 'the sea'), in contrast, constitute the dominant and distinctive element of the earlier mark "in that it refers to certain properties of the goods". This statement seems to indicate that the term 'la mer' itself could have a low distinctive value, which seems to contradict the line of argumentation of the CFI. Arguably, it is debatable whether the findings of the CFI with respect to the likelihood of confusion between the marks are persuasive.

This decision shows that the EU courts are increasingly generous with regard to proof of genuine use of a mark registered for over five years. For consumer goods, in particular, small amounts of sales, minimal use and even circumstantial evidence may be taken into account by the CFI. It is questionable whether this is what the European legislature had in mind when drafting the provisions on genuine use.

Moreover, it appears that the CFI tends to uphold oppositions where the mark applied for is contained in the earlier mark and it is established that the differing part of the earlier mark is not the distinctive and dominant element of the mark.

Alexander R Klett, Gleiss Lutz, Munich