Legal Updates

Intellectual Property: Trade Mark Revocation - Non Use

In the recent case of La Mer Technologies Inc v Laboratoires Goemar SA [2004], the court revoked the entire UK trade mark registration owned by Laboratoires Goemar SA for the mark LABORATOIRE DE LA MER in respect of 'perfumes and cosmetics containing marine products; all included in Class 3' on grounds of non-use.

The case involved a trade mark revocation action brought by La Mer Technologies Inc against Laboratoires Goemar SA for the mark LABORATOIRE DE LA MER on the grounds of non-use. Laboratoires Goemar SA was based in St Malo and specialised in seaweed products. On or around October 1989, the company filed two UK trade mark applications for the mark LABORATOIRE DE LA MER in Classes 3 and 5¹. The first application was in respect of 'perfumes and cosmetics containing marine products; all included in Class 3'. The second application was in respect of 'pharmaceutical, veterinary and sanitary products, dietetic products for medical use; all included in Class 5 and all containing marine products'.

Section 46 of the Trade Marks Act 1994 provides so far as is material: '(1) The registration of a trade mark may be revoked on any of the following grounds (a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use, (b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use'.

The First application (Class 3²) - The trade mark LABORATOIRE DE LA MER was registered in February 1992. The company struggled to sell these products in the UK and in the five years following registration of the mark, the sales of the Class 3 products amounted to around £800. The products were sold to the their agent based in Scotland. The agent ceased trading and was struck off Companies House Register in October 1997. It transpired that during that period, there were, in all, five deliveries of the Class 3 products in small containers with recommended retail prices of between £5 and £30 each. The majority of the products were delivered in April 1997. There were no deliveries after May 1997.

The Second Application (Class 5³) - Laboratoires Goemar SA claimed to have sold approximately £600 worth of products in respect of the Class 5 registration.

Application for Revocation - In March 1998, La Mer Technologies Inc applied for revocation of the two trade marks on the grounds of non'use. The application relating to the Class 3 registration succeeded to the extent that it related to 'perfumes'. In fact, the application relating to the Class 5 registration succeeded to the extent that it related to 'pharmaceutical, veterinary and sanitary products'.

La Mer Technologies appealed against both decisions, contending that the two registrations should have been wholly revoked. With regard to the Class 5 registration, the appeal was allowed in relation to the remainder of the goods and as such the registration was wholly revoked.

However, on the appeal in relation to the remainder of the goods in the Class 3 registration, the court referred seven questions concerned with the meaning of 'genuine use' 4. Laboratoires Goemar SA was

   1. Each trade mark owner has to file a trade mark application in one or more of 42 classes (an International Classification) in respect of the goods and/or services that the owner provides.
   2. Class 3 Goods cover ' Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices'
   3. Class 5 Goods cover '' Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides'.
   4. as those words appear in arts 10(1) and 12(1) of the Trade Marks Directive (First Council Directive 89/104/EEC) and s 46(1) of the Trade Marks Act 1994 which, so far as relevant, gave effect in domestic legislation to those two articles. The reference resulted in an Order of the Court. As a result of that Order of Court, the appeal was confined to the remainder of the goods in the Class 3 registration.

required to show 'genuine use' of the mark within the five year period. The appeal was allowed. The Courts held that the proven use of the mark was not sufficient to amount to genuine use. The judge decided that whether in any given case the proven use amounted to genuine use would depend on all of the facts and circumstances relevant to establishing such a state of affairs, including

• the characteristics of the market concerned and of the products or services in question; and
• the frequency or regularity of use of the mark.

In this case, 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 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 identical and/or cosmetic products. Hence the proven use fell short of genuine use. The Class 3 registration was therefore revoked.

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© RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.