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    Intellectual property

    Genuine use: Market share: Non use: Trade marks: Creation of market share: Internal use of mark: Steps taken to bring mark to public’s attention: Class 3: Cosmetics: Distribution to agent: End-users: Token use: Internal use: External use: Sufficiency of use: Council directive 89/104 1988: Art.10 (1) Council Directive 89/104 1988: Art. 12 (1) Council directive 89/104 1988: s.46(1) Trade Marks Act 1994.

    In order to establish genuine use of a trade mark the proprietor had to show that use of the mark was directed to and had come to the attention of the consumer or end-user and was sufficient to maintain or create a share in the market for the goods in question. The fact that the use that had occurred was neither purely token nor purely internal did not necessarily mean it was genuine use within Council Directive 89/104.

    The appellant (M) resumed its appeal against a decision partially revoking the trade mark LABORATOIRE DE LA MER belonging to the respondent (G). The mark had been registered for over five years in Class 3 in respect of perfumes and cosmetics containing marine products. G had made minimal sales of goods to an agent but there was no evidence of any sales to the public. M had succeeded in its application to revoke the mark for non-use in respect of perfumes, and its appeal in respect of cosmetics (Re Laboratoires Goemar SA (2002) FSR 59) was referred to the European Court of Justice (C-259/02 La Mer Technology Inc v Laboratoires Goemar SA 2004/C94/27) for a ruling on the meaning of “genuine use” in Council Directive 89/104 Art.10 (1) and Art.12 (1) and in the Trade Marks Act 1994 s.46 (1). M submitted that genuine use had to be directed to and come to the attention of the consumer or end-user and be sufficient to maintain or create a share in the market for the goods in question and that, in the instant case, there was only evidence of internal use of the mark. G submitted that use that was neither purely token nor purely internal had occurred and it was not necessary to show that use of the mark had reached the end-user or consumer; and that importation and distribution to wholesalers or retailers was a sufficient indication of the proprietor’s intention to use the mark to create or preserve a share of the market of those goods.

    HELD: Whether the proven use amounted to genuine use depended on all the circumstances including the characteristics of the market and of the products in question, and the frequency or regularity of use of the mark. Minimal use would be sufficient if, in the market concerned, the proven use were considered sufficient to preserve or create a market share for the goods. The fact that the proprietor of the mark had every intention of using the mark in the market for the goods protected by it was in itself not sufficient. The test was objective except where it was shown that the purpose of the use (which would invariably be minimal) was solely to preserve the mark, case C-40/01 Ansul BV v Ajax Branbeveiligin BV [2003] R.P.C 40 applied. In the instant case there was no evidence that the products were offered for sale to the public or that other steps were taken to bring the mark to the public’s attention so as even to start to create a share in the market.

    Appeal allowed.

    In the matter of UK registered trade marks nos. 1338514 & 1402537 in the name of Laboratoires Goemar SA & In the matter of applications for revocation thereof nos. 10073 & 10074 by La Mer Technology Inc sub nom La Mer Technology Inc v Laboratoires Goemar SA (2004)

    Lawtel: 17.1.05