Five years’ non-use can mean curtains for any UK trade mark registration, but was sale to a UK distributor of £800 worth of ‘La Mer’ products enough to save the brand? We report the outcome in Chancery at
La Mer Technology Inc. and Laboratoires Goemar SA
Chancery Division of the High Court of Justice, London
In a recent case the Court grappled with the question of whether a registered trademark should be revoked on grounds of 5 years' non-use. Registered trademarks can be kept alive indefinitely by simply paying the renewal fee. They can be struck off the register, however, if they are not genuinely used by the proprietor for a period of 5 continuous years.
The case in question concerned the trademark "La Mer" registered for cosmetics.
The only evidence of use of the brand in the UK during the relevant 5 year period was by way of the export by the registered proprietor of the mark of £800 of La Mer cosmetics to its UK distributor. The distributor then went into liquidation and none of the cosmetics were sold on the open market, nor did it appear that they had been advertised by either the proprietor or the UK distributor.
The question was whether this limited use of the brand was enough to keep it alive during the relevant 5 year period.
At the end of lengthy litigation including a reference to the European Court of Justice, the Court eventually found that the brand should be struck off the UK register. Recent authorities made it quite plain that the brand in question had to come to at least the attention of the end user or consumer during the 5 year period for the registration to stay alive. This meant that the goods carrying the brand had to be either put on the market or advertised, and if this had not taken place for a period of 5 years then the mark was vulnerable to revocation.
Since none of this had happened with La Mer in the UK for five years the registration was revoked.
Why this matters:
This judgement underlines the potentially crucial importance of advertising to ensure the survival of trademark registrations. Not only that, but it is also key to ensure that full records are kept of all advertising activity in respect of all brands in a company's portfolio, so that if the matter is ever challenged the evidence can be quickly wheeled out.