No Genuine Piece Of Employment Of Goemar's Merchandise Mark, Rules Referring Court

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

Goemar, a fellowship that specialised inwards seaweed products, obtained registration of 2 merchandise marks comprising the words LABORATOIRE DE LA MER.

The commencement mark, for perfumes as well as cosmetics containing marine products (Class 3), was registered inwards Feb 1992. Sales inwards the United Kingdom of Great Britain as well as Northern Ireland of Britain as well as Northern Republic of Ireland for the 5 years after registration were really limited, amounting to alone well-nigh £800 worth of goods, which were sold to Goemar’s Scottish-based agent who after ceased trading as well as was struck off the register of companies inwards Oct 1997. Most of the goods sold were covered past times a unmarried delivery inwards mid-April 1997. There were 4 other deliveries, none beingness before Nov 1996 nor after May 1997.

The instant mark was for pharmaceutical, veterinarian as well as sanitary products, dietetic products for medical run as well as containing marine products (Class 5). About £600 worth of goods were arguably inside the Class 5 registration.

In March 1998 La Mer sought to revoke the 2 merchandise marks on the basis that at that topographic point had been 5 years’ continuous non-use. The application relating to the Class three registration succeeded alone amongst regard to perfumes; that relating to the Class 5 registration succeeded alone for pharmaceutical, veterinarian as well as sanitary products. La Mer appealed, contending that both registrations should stimulate got been wholly revoked. The appeals were allowed inwards relation to the balance of the Class 5 goods. However, on the appeal relating to the Class three goods Mr Justice Jacob referred to the European Court of Justice vii questions concerned amongst the important of ‘genuine use’ every bit those words look inwards Articles 10(1) as well as 12(1) of the Trade Marks Directive (Council Directive 89/104) as well as department 46(1) of the Trade Marks Act 1994 which implemented those Articles. Following an Order of the ECJ the example returned to the High Court for determination of whether Goemar had shown ‘genuine use’ of the score inside the relevant menstruation of 5 years.

Mr Justice Blackburne allowed La Mer’s appeal as well as revoking the Class three registration inwards its entirety, belongings that the run of the score which Goemar had shown was non sufficient to amount to genuine use.

* Whether proven run amounted to genuine run depends on all of the facts as well as circumstances, including the characteristics of the marketplace concerned as well as of the products or services inwards question, too every bit the frequency or regularity of run of the mark.

* Here at that topographic point was nix to dot that the products had e'er been offered for sale, allow lonely sold. to members of the public, every bit terminate users or consumers, or that steps -- whether inwards price of advertising or otherwise -- had been taken to convey to the public’s attending the existence of the score every bit a agency of distinguishing those products from others having about other source then every bit fifty-fifty to get to practise for them a part inwards the marketplace for cosmetic products of that or a like kind. It followed that the proven run savage curt of genuine use.

Merpel says: "Watch out! Even marine cosmetics tin stimulate got surprising side effects"

suspects that, despite rulings inwards this example as well as inwards Case C-40/01 Ansul, courts inwards unlike jurisdictions volition yet see unlike degrees of run to live on genuine. Also, run which is genuine inwards abide by of about types of goods or services may non live on regarded every bit genuine inwards abide by of others. This may live on no bad thing, since markets operate differently inwards countries as well as inwards abide by of unlike commodities as well as services, merely lawyers should scream upwardly when citing precedents that before decisions on what constitutes genuine run may live on closely determined past times a unique fix of facts as well as that no analogy betwixt unlike cases may live on apt.

Marine cosmetics here, here and here
Marine creatures inwards involve of cosmetics here, here and here