Gerber court rules on meaning of 'bona fide use'

In Gerber Foods International Limited v Gerber Products Company, the Court of Appeal has upheld a High Court decision ruling that the registration of the mark GERBER may not be cancelled, even though the mark had only been used during a limited marketing exercise over a period of five years. 'Bona fide use', ruled the court, means honest use under the Trademarks Act 1938, not use on a substantial scale.

Gerber Products Company (Products), a US corporation, marketed and sold baby food under the registered mark GERBER in the United Kingdom from 1965 to 1979. At the end of the 1980s, Gerber Foods International Limited (Foods), a UK food and drink company, sought to register 'Gerber' and 'Gerber Pride' as trademarks, but was unable to do so because of Products' prior registration. In 1990 Foods applied for the cancellation of Products' registration on the grounds that there had been no bona fide use for the preceding five years. The application was made under Section 26(1)(b) of the Trademarks Act 1938 as the period of alleged non-use was prior to the implementation of the Trademarks Act 1994.

Products' defence relied primarily on the fact that in 1989 it sold $300-worth of baby food in a short marketing exercise limited to a town in Sussex. Foods argued that this could not amount to bona fide use, as it did not fulfil an objective test of "real commercial use on a substantial scale". The hearing officer accepted this argument and ordered the cancellation of Products' mark. Products appealed.

The High Court reversed the hearing officer's decision. It found that it was the honesty of use that was an essential requirement of the term 'bona fide', and that considerations of substantiality and commercial use were only to be applied to the circumstances of individual cases. Foods appealed.

The Court of Appeal upheld the High Court decision, finding that "the key to the test of bona fide use [...] is whether [...] it can be described as 'a pretended use'". An honest intention to make use of the mark, necessarily something that must be judged subjectively, should be considered 'bona fide'.

Importantly, the court added that this key test could "possibly" also apply to that of 'genuine use' under Section 46(1) of the Trademarks Act 1994, which is an import from Article 10 of the Community Trademark Directive.

For discussion of a similar ruling in Canada, see Definition of 'use' expanded to cover market testing.

Nick Rose, Field Fisher Waterhouse, London