Laboratoires Goëmar SA v La Mer Technology Inc
Reference:  EWCA Civ 978;  FSR 5
Court: Court of Appeal (Civil Division)
Judge: Mummery and Neuberger LJJ, Black J
Date of judgment: 29 Jul 2005
Summary: Trade marks - Genuine use - Non-use - Revocation - Importation - Internal use - s.46 Trade Marks Act 1994
Instructing Solicitors: Withers LLP for the Appellant; Lane and Partners for the Respondent
La Mer Technology Inc (‘La Mer’), part of the Estee Lauder group which sells the well-known Crème de la Mer skin products, brought an action seeking revocation of the registered trade mark LABORATOIRE DE LA MER on the ground of non-use of the mark in relation to “perfume and cosmetics containing marine products” for a period of five years or more. The proprietor of the mark, Laboratoires Goëmar SA (Goëmar), relied upon importation into the UK of a modest quantity of goods bearing the mark, although no goods ever reached consumers or end-users in the UK. The Registrar dismissed the action; after a reference to the ECJ, Blackburne J allowed La Mer’s appeal, holding that genuine use of the mark required that it come to the attention of the end-users and consumers during the relevant period, and that the acts of importation during the relevant period by an independent importer into the UK of goods bearing the mark were instead akin to internal use. Goëmar appealed.
Whether evidence of importation of goods bearing a mark by an independent importer, without evidence of the goods reaching end-users and consumers, was sufficient to prove that a mark has been “put to genuine use” within s.46 of the Trade Marks Act 1994.
Allowing the appeal: The use here was neither token use nor internal use. Applying Ansul BV v Ajax Brandbeveiliging BV  Ch 97 and the ECJ’s reasoned order in this case ( FSR 38), 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. There is also the market in which goods bearing the mark are sold by foreign manufacturers to importers in the UK. There was sufficient use on that market for it to be genuine use, and in that market the mark was being used in accordance with its essential function, to distinguish the origin of goods. The use was real, though modest, and did not cease to be real and genuine because there was no onward sale of the goods into the supply chain in the retail market. Per Neuberger LJ: Any use of a trade mark which is not token or internal and which is “consistent with [its] essential function” constitutes genuine use.
This decision confirms that, contrary to Blackburne J’s ruling in the High Court, there is no requirement that ‘genuine use’ of a trade mark need be in relation to the retail market. Any use of a mark to distinguish the origins of goods from those of other undertakings, so long as it is not merely token use or use internal to the proprietor, will be sufficient to protect a mark from revocation for non-use.