WHEN A LITTLE USE IS PRETTY USEFUL ...

After a long trek through the courts, La Mer Technology Inc v Laboratoires Goemar SA[2005] EWCA Civ 978 may finally have to come to rest. Yesterday the Court of Appeal for England and Wales allowed the trade mark owner's appeal against a ruling that it had not made genuine use of its trade mark.

Goemar, a French company that made things out of seaweed, owned the UK registered trade mark LABORATOIRE DE LA MER for perfumes and cosmetics containing marine products. Goemar made only very imited sales of LABORATOIRE DE LA MER products to a small enterprise that was its agent in the UK and there was no evidence of any sales being made to members of the public as consumers or end-users. La Mer (part of the Estee Lauder group) sought to revoke Goemar's mark on the ground of non-use of the mark for a period of five years. The registrar dismissed that application and La Mer. The appeal judge (Mr Justice Jacob) stayed the appeal and referred to the European Court of Justice for a preliminary ruling questions as to what quantity and kind of use are sufficient to prove that a mark has been put to genuine use.

The ECJ meanwhile, having given a ruling on much the same questions in Case C-40/01 Ansul , gave its decision on this reference in the form of an order, on the basis that the answers to the questions could be clearly deduced from its earlier judgment.

By the time the High Court had the answers to its questions, Mr Justice Jacob had been promoted to the Court of Appeal and a new judge had to be found: this was Mr Justice Blackburne. He ruled that there had been no ‘genuine use’ of the mark in the UK, having found that genuine use of the mark required that it come to the attention of end-users and consumers during the relevant period. In his opinion the acts of importation during the relevant period by an independent importer in to the UK of goods bearing the mark did not by themselves amount to genuine use of the mark; additionally, the proven use during the relevant period was insufficient to create a market share for the goods protected by the mark. He therefore allowed La Mer's appeal and revoked the trade mark for non-use. Goemar appealed, arguing that the effect of Blackburne J's judgment was to erect a quantitative and qualitative test for market use and market share which was not set by the ECJ.

Allowing Goemar's appeal, the Court of Appeal held as follows:

* purely token use of a mark did not count as genuine use, although it did not follow that every case of non-token use would qualify as genuine use;

* 'internal' use by the trade mark owner, within its own business, did not count as genuine use;

* so long as the use of a mark was neither token nor internal, imports by even a single importer could suffice for determining whether there was genuine use of the mark on the market;

* there was no quantitative or qualitative test for market use and market share;

* in this case, the modest amount of quantities involved and the more restricted nature of the import market had not prevented the use of the mark on the goods from being genuine use on the market.

The IPKat has to concede that this approach is right. He also recommends a read of the recent Irish Patent Office decision in Stefcom's trade mark, which takes a thoroughly sensible approach to the assessment of evidence of small-scale use of a trade mark. He wonders, though, whether consumers might associate the little-used LABORATOIRES DE LA MER mark with the more popular COCO DE MER brand.

More about seaweed here and here
Seaweed recipes here and here
La Mer here