Gerber Foods International Limited v Gerber Products Company

Under section 26(1)(b) of the Trade Marks Act 1938, “bona fide use” requires use of the mark in the course of trade in relation to the registered goods and an honest intention to make that use. The use must not be pretended, fictitious or colourable.

There is no separate requirement that use be substantial, continuous, commercially competent or likely to establish a market. Scale, ordinary commercial standards, the nature of the goods and the absence of follow-up activity may be relevant evidence of honesty, but they are not independent ingredients of the test. A genuine, limited market-testing exercise may therefore constitute bona fide use.

Gerber Foods International Limited applied under section 26(1)(b) of the Trade Marks Act 1938 to remove or rectify Gerber Products Company’s registered Gerber marks for alleged five-year non-use.

The Registrar’s Hearing Officer found that a limited test-marketing exercise in Haywards Heath was honest but insufficiently substantial to amount to bona fide use, and ordered removal. He also considered whether sales to United States Air Force bases justified geographically limited registration under section 26(2)(b).

The Vice-Chancellor, reviewing the decision under section 51, held that bona fide use meant honest use and allowed the registration to stand. The principal issue before the Court of Appeal was whether substantiality was an additional objective requirement.

1. Appeal dismissed. The Court upheld the Vice-Chancellor’s decision on the Haywards Heath issue. The US Bases issue was consequently academic.
2. Lord Justice Auld, with Lord Justices Brooke and Carnwath agreeing, held that the ratio of Electrolux Ltd v Electrix Ltd was that bona fide use means honest or genuine use in the ordinary sense, rather than pretended use. References in that case to substantial, ordinary or non-spasmodic commercial use were explanations of the decision on its facts, not additional universal requirements.
3. The statutory test has two ingredients: some use in the course of trade of a mark referable to the registered class, and an honest intention to make that use. There is no separate test of objective genuineness measured by commercial standards or substantiality.
4. Substantiality, market standards, the trader’s circumstances and the nature of the goods may nevertheless assist in deciding whether the use was honest or merely a pretence. The absence of a firm intention to establish a market, commercial competence, likely success or follow-up activity is not necessarily fatal.
5. The Hearing Officer had expressly found that the exercise was consistent with market testing to gauge customer and store reaction and was not fictitious or colourable. His conclusion that it was nevertheless not bona fide involved a contradiction that could only be sustained by imposing an impermissible substantiality requirement.

• Court of Appeal (Civil Division): The appeal from the Vice-Chancellor was dismissed. The Vice-Chancellor had reversed the Hearing Officer’s finding of non-use and held that the Haywards Heath exercise was bona fide use.
• Trade Marks Registry: The Hearing Officer had ordered removal of the marks, subject to his alternative consideration of geographical limitation under section 26(2)(b).