Trade marks: The meaning of "genuine use" in the context of applications to revoke for non-use - Laboratories Goëmar SA v La Mer Technology Inc

In New Zealand a trade mark can be revoked for non-use. The relevant provision is section 66(1)(a) of the Trade Marks Act 2002 which essentially provides that if the mark has not been put to genuine use in the course of trade in New Zealand for a continuous period of three years, it may be revoked unless the non-use of the mark is due to special circumstances that are outside the control of the owner of the trade mark.

The recent English case of Laboratories Goëmar SA v La Mer Technology Inc is likely to be great assistance to New Zealand trade mark practitioners in assessing the application of s66(1)(a), as it discusses in detail the concept of "genuine use" of a trade mark in the context of the corresponding revocation for non-use provision in the English Trade Marks Act 1994.

The Laboratories Goëmar SA case was an appeal to the English Court of Appeal from a decision of Blackburne J which had revoked Goëmar's trade mark LABORATORIE DE LA MER for non-use.

The mark had been registered by Goëmar in relation to "perfumes and cosmetics containing marine products; all included in Class 3".

La Mer Technology Inc applied to have the mark revoked for non-use under the corresponding provision to s66(1)(a) in the UK Trade Marks Act.

Goëmar argued that it had genuinely used the mark within the relevant period. The use it relied on was importation into the United Kingdom by a single importer of a modest quantity of goods bearing the mark, but there was no evidence that the goods bearing the mark ever reached consumers or end-users of goods in the UK market.

In brief, Blackburne J held that:

1. genuine use of the mark required it to come to the attention of the end-users and consumers during the relevant period;
2. the acts of importation during the relevant period by an independent importer into the United Kingdom of goods bearing the mark did not by themselves amount to genuine use of the mark; and
3. the proven use by the registered proprietor during the relevant period was not sufficient to create a market share for the goods protected by the mark.

The Court of Appeal came to a different conclusion.

In doing so, it considered the comments of the European Court of Justice (the ECJ) in Ansul BV v Ajax Brandbeveiliging B (a case on genuine use) and the reasoned order that had issued from the ECJ as a result of an earlier reference made by Jacob J in the La Mer proceedings. They also carefully considered what criteria or factors should be taken into account in deciding whether a mark has been put to "genuine use", what types of use can be considered and specifically whether importation by a single importer can count as "genuine use".

In analysing the decision of the Court of Appeal it can be determined that:

• genuine use must denote use that is not merely token, serving solely to preserve the rights conferred by the mark.



• genuine use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end-user by enabling him to distinguish the product or service from others which have another origin.



• genuine use entails use of the mark on the market for the goods or services protected by the mark and not just internal use by the undertaking concerned;



• when assessing whether there has been genuine use of the trade mark, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, in particular whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark;



• use of the mark need not always be quantitatively significant for it to be deemed genuine - minimal use can be sufficient to qualify as genuine, on condition that it is deemed to be justified, in the economic sector concerned, for the purpose of preserving or creating market share for the goods or services protected by the mark.



• the characteristics of the market concerned, which directly affect the marketing strategy of the proprietor of the mark, may also be taken into account in assessing genuine use of the mark;



• the use of the mark by a single client which imports the products for which the mark is registered can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor of the mark.



• the retail or end user market is not the only relevant market on which a mark is used for the purpose of determining whether use of the mark is genuine.

Despite the fact that only a modest amount of the relevant goods had been imported into the UK and there was no evidence of their sale to end-users or consumers, the Court of Appeal found that these factors did not prevent the use of the mark on the goods from being genuine use on the market.

In other words, as the use was neither token nor internal, the imports by a single importer did suffice for determining that there was genuine use of the mark on the market in the UK.

The appeal was therefore successful and the order for the revocation of the mark was set aside.

Enquiries and information

For more information on copyrights or any other intellectual properties issues, please email or call Garry Williams on 64 9 916 8661.