Laboratoires Goemar SA v La Mer Technology Inc

Genuine use of a trade mark requires real use on a market for the registered goods, consistent with the mark’s essential function of indicating origin. It need not be quantitatively significant, reach consumers or end-users, or create a substantial market share. An arm’s-length sale by a foreign proprietor to a single independent importer may suffice, provided the use is neither token nor internal. The assessment is objective and case-specific, taking account of the goods, the market, and the scale and frequency of use. A retail or end-user market is not the only relevant market.

Goemar’s trade mark for cosmetics was challenged by La Mer for five years’ non-use. The Registrar dismissed the revocation proceedings, finding that five deliveries of goods worth approximately £800 to an independent UK importer amounted to genuine use, although there was no evidence of onward sales to consumers.

Blackburne J allowed La Mer’s appeal and revoked the registration as at 27 March 1998. Goemar appealed to the Court of Appeal. The proceedings had earlier included a reference by Jacob J to the Court of Justice, following his decision reported at [2002] FSR 790. The central issue was whether modest importation and arm’s-length sales to a single importer constituted genuine use.

1. The appeal was allowed. The order revoking the registration was set aside and the Registrar’s order was restored.
2. Articles 10 and 12 of the Trade Marks Directive EEC/89/104, implemented by section 46 of the Trade Marks Act 1994, had to be given the same meaning. Following Ansul BV v Ajax Brandbeveiliging BV [2005] Ch 97, genuine use meant actual use on the market for the registered goods, consistent with the essential function of a trade mark. Token use serving only to preserve registration rights, and internal use, were insufficient.
3. The Court of Justice had not imposed a requirement that use reach retail consumers or end-users, nor any quantitative or qualitative threshold requiring substantial or significant use. Minimal use could qualify where, viewed objectively, it was real rather than token. The assessment remained one for the national court on all the circumstances, including the nature of the goods, the characteristics of the market, and the scale and frequency of use.
4. The relevant market was not confined to the retail market. A market existed in which a foreign manufacturer sold marked goods to a UK importer. The transactions were external to Goemar, apparently at arm’s length, and resulted in the goods passing into different ownership in the United Kingdom. The absence of onward sales to consumers did not by itself make the use internal or unreal.
5. Subjective intention or motivation was of limited assistance. The objective circumstances of the sales and importation showed an economic market and use of the mark in accordance with its essential function. The use was modest and close to exiguous, but it was not found to be token or de minimis.

• Court of Appeal (Civil Division): allowed Goemar’s appeal, set aside the revocation order, and restored the Registrar’s order.
• Chancery Division, Blackburne J: allowed La Mer’s appeal from the Registrar and revoked the registration as at 27 March 1998.
• Chancery Division, Jacob J: referred questions on the interpretation of genuine use to the Court of Justice during the earlier appeal proceedings.
• Registrar of Trade Marks: dismissed La Mer’s revocation proceedings on 19 June 2001.