Previously on marketinglaw we reported a case in which the absence of consumer advertising played a crucial part in the revocation of a trade mark registration for lack of use.
Who: Laboratoires Goemar SA v La Mer Technology Inc
Where: Court of Appeal of the High Court of Justice
When: July 2005
The Court of Appeal pronounced judgment on an appeal by French seaweed product specialists Laboratoires Goemar ("LG") against the revocation of its UK registered trademark "Laboratoires De La Mer" for perfumes and cosmetics ("the Brand").
The decision appealed against was reported earlier on marketinglaw. The verdict then was that LG had failed to use the Brand in connection with the registered products for a continuous period of at least 5 years and therefore should lose the registration.
The verdict had hinged to a considerable extent on the absence of any advertising or sale by LG to UK end users of products sold under the Brand during the 5 year period. On appeal, LG argued that the absence of such retail advertising and sale should not be fatal to the Brand.
They pointed out that during the 5 year period they had delivered 5 batches of Branded products to their UK importer. They had been packed in containers bearing the Brand and in LG's submission this should be sufficient to classify as "genuine use" and therefore allow them to retain the registration.
The Court of Appeal agreed with LG.
Retail advertising/sale not essential
Simply because the UK importer of the products had not got round to advertising or selling the product to end users in the UK during the 5 year period should not be fatal to LG's registration. The end user market was not the only relevant market in which a mark needed to be used to give rise to genuine use for the purposes of keeping a trademark registration alive.
Goods bearing the Brand had been sold by LG to the UK importer in arm's length transactions and although the quantities involved were modest, these events were still "external" to LG and the result of the sales was that goods bearing the Brand were in different ownership in different hands in the UK. In the appeal court's view, use of the Brand by importation by a single importer into a member state could be sufficient to demonstrate that such use was genuine.
In all the circumstances therefore the Court of Appeal upheld LG's appeal and set aside the previous order for revocation of the trademark registration.
Why this matters:
Registered trademark owners often fail to appreciate the necessity for genuine use of the trademark in every country where it is registered, failing which the registration can be lost.
This case shows that even if there is no advertising and sale of products under the brand in question to end users, importation to a wholesaler or agent can be sufficient to amount to genuine use, thus keeping registration of a mark alive. But as ever the decision turned on its own facts: to be on the safe side, registered brand owners should ensure respectable levels of marketing and sales to end users at least once during any five year period and keep a full record of all this activity.