Interpretation of genuine use affirmed by ECJ

European Union

In La Mer Technology Inc v Laboratoires Goemar SA, the European Court of Justice (ECJ) has affirmed its interpretation of what constitutes genuine use of a mark.

Laboratoires Goemar SA, a French company, owns two trademarks for LABORATOIRE DE LA MER in connection with products derived from seaweed. On the basis that sales of these products in the United Kingdom had not been very profitable, La Mer Technology Inc made an application to revoke the marks claiming that although the marks had been on the register for five years, they had not been put to genuine use pursuant to the Community Trademark Directive.

The UK High Court revoked one of the marks but held that it was not clear whether the other mark had been put to genuine use in the circumstances. The High Court stayed the proceedings and referred questions to the ECJ relating to the interpretation of Articles 10(1) and 12(1) of the Community Trademark Directive, which indicate that a trademark registered in the European Union is liable for revocation if (i) it is not put to genuine use within five years of its registration, or (ii) genuine use is suspended for an uninterrupted period of five years.

The ECJ felt that its ruling in Ansul answered the terms of the High Court's reference. In Ansul, the ECJ commented that in order to be genuine the use of a mark must not be "token", serving solely to preserve the rights conferred by the mark, but must "be consistent with its essential function" and operate to guarantee the identity or origin of the goods or services for which it is registered. As such, the use of the mark need not be quantitatively significant to be genuine in the course of trade.

As it believed it had already answered the High Court's questions, it expressly asked the High Court to withdraw its reference. However, the High Court withdrew only one of its questions.

The ECJ delivered its answer to the reference without a hearing by invoking Article 104(3) of its Rules of Procedure. It underlined the principles set out in Ansul but also added that in assessing whether a use is genuine "regard must be had to all the facts and circumstances relevant to establish whether the commercial use of the mark is real in the course of trade". Particular attention should be paid to the nature of the goods and services, the characteristics of the market, the scale and frequency of use and whether such use is viewed in the economic sector concerned as warranted to maintain or create a share in the market for such goods and services.

In response to the High Court's question as to whether use after the date of the application for revocation could be taken into account, the ECJ stated that the directive does not expressly exclude such use and, in certain circumstances, use after this date could be relevant to shed light on the genuine nature of the use.

Nick Rose, Field Fisher Waterhouse, London

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