The sequel to the Order of the European Court of Justice in Case C- 259/02 1 has emerged in Mr Justice Blackburne's Chancery Division ruling in La Mer Technologies Inc v Laboratoires Goemar SA, 20 December 2004 (still unavailable via BAILII and the Court Service websites).

Goemar, a company that specialised in seaweed products, obtained registration of two trade marks comprising the words LABORATOIRE DE LA MER.

The first mark, for perfumes and cosmetics containing marine products (Class 3), was registered in February 1992. Sales in the UK for the five years after registration were very limited, amounting to only about £800 worth of goods, which were sold to Goemar’s Scottish-based agent who subsequently ceased trading and was struck off the register of companies in October 1997. Most of the goods sold were covered by a single delivery in mid-April 1997. There were four other deliveries, none being before November 1996 nor after May 1997.

The second mark was for pharmaceutical, veterinary and sanitary products, dietetic products for medical use and containing marine products (Class 5). About £600 worth of goods were arguably within the Class 5 registration.

In March 1998 La Mer sought to revoke the two trade marks on the ground that there had been five years’ continuous non-use. The application relating to the Class 3 registration succeeded only with regard to perfumes; that relating to the Class 5 registration succeeded only for pharmaceutical, veterinary and sanitary products. La Mer appealed, contending that both registrations should have been wholly revoked. The appeals were allowed in relation to the remainder of the Class 5 goods. However, on the appeal relating to the Class 3 goods Mr Justice Jacob referred to the European Court of Justice seven questions concerned with the meaning of ‘genuine use’ as those words appear in Articles 10(1) and 12(1) of the Trade Marks Directive (Council Directive 89/104) and section 46(1) of the Trade Marks Act 1994 which implemented those Articles. Following an Order of the ECJ the case returned to the High Court for determination of whether Goemar had shown ‘genuine use’ of the mark within the relevant period of five years.

Mr Justice Blackburne allowed La Mer’s appeal and revoking the Class 3 registration in its entirety, holding that the use of the mark which Goemar had shown was not sufficient to amount to genuine use.

* Whether proven use amounted to genuine use depends on all of the facts and circumstances, including the characteristics of the market concerned and of the products or services in question, as well as the frequency or regularity of use of the mark.

* Here there was nothing to indicate that the products had ever been offered for sale, let alone sold. to members of the public, as end users or consumers, or that steps -- whether in terms of advertising or otherwise -- had been taken to bring to the public’s attention the existence of the mark as a means of distinguishing those products from others having another origin so as even to start to create for them a share in the market for cosmetic products of that or a similar kind. It followed that the proven use fell short of genuine use.

Merpel says: "Watch out! Even marine cosmetics can have surprising side effects"

The IPKat suspects that, despite rulings in this case and in Case C-40/01 Ansul, courts in different jurisdictions will still consider different degrees of use to be genuine. Also, use which is genuine in respect of some types of goods or services may not be regarded as genuine in respect of others. This may be no bad thing, since markets operate differently in countries and in respect of different commodities and services, but lawyers should remember when citing precedents that earlier decisions on what constitutes genuine use may be closely determined by a unique set of facts and that no analogy between different cases may be apt.

Marine cosmetics here, here and here
Marine creatures in need of cosmetics here, here and here


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