Genuine use obstacle sinks LABORATOIRE DE LA MER mark

In La Mer Technology Inc v Laboratoires Goemar SA ([2004] EWHC 2960 (Ch), December 21 2004), the High Court of England and Wales has revoked the mark LABORATOIRE DE LA MER on the grounds of non-use.

Laboratoires Goemar SA (Goemar) owned the mark LABORATOIRE DE LA MER in Class 3 of the Nice Classification in respect of perfumes and cosmetics. Goemar's sales in the United Kingdom for the five years after registration (February 1992) were limited to approximately £800-worth of goods, which were accepted to be within the Class 3 registration and were sold to Goemar's agent in Scotland. The agent subsequently ceased trading. There were in total five deliveries of the Class 3 goods, with the majority taking place in April 1997. La Mer Technology Inc applied for the revocation of the mark on the basis of non-use.

The trademark registrar partially revoked the mark and La Mer appealed, seeking complete revocation. The High Court referred the case to the European Court of Justice (ECJ) for a ruling on the meaning of 'genuine use' within the Community Trademark Directive.

The ECJ stated that genuine use must be (i) actual use, and (ii) consistent with the essential function of the trademark, namely to guarantee the origin of the goods. Therefore, it must relate to goods already marketed or about to be marketed and for which preparations to secure customers are underway - for example advertising campaigns (see Interpretation of genuine use affirmed by ECJ).

Back in the High Court, La Mer submitted that genuine use had not occurred in the present case and that there was evidence only for internal use of the mark. Goemar argued that it was not necessary to show that the use of the mark had reached the end user or consumer but that importation and distribution to wholesalers or retailers was sufficient to evidence genuine use.

The High Court allowed the appeal. It found, in light of the ECJ interpretation, that genuine use depended on all the circumstances, including the characteristics of the market and the products in question, and the frequency or regularity of use of the mark. Minimal use was sufficient if it preserved or created a market share for the goods. However, even if the proprietor of the mark had every intention of using it in the market for the goods protected by it, that was not in itself sufficient.

The court held that, although in the current case the purpose of the minimal use was not solely to preserve the mark, there was no evidence that Goemar offered the products for sale to the public or end users to create a share in the market. Accordingly, the court concluded that the use shown had all the attributes of internal use and it granted La Mer's application for complete revocation.

Vincent O'Grady, Ashurst, London