UK: Removing Unused Trade Marks From The Register - Genuine Use in Laboratories Goemar Sa And La Mer Technology Inc

Background

With the increased public awareness of brands, business has become wise to the value of trade mark registration. Most companies now want to register the names of their main products and services to ensure that they can be protected from third parties’ use. However, this increase in awareness has a downside, the Trade Mark Register is bulging with registrations. The effect of this, is that over recent years it has become increasingly difficult to think up new trade marks for registration. This problem has further increased with the introduction of the Community Trade Mark, as marks effectively need to be unique all over Europe. One recent attempt by a company to come up with an unregistered name for a product resulted in ten different suggestions before a suitable unclaimed mark was found. So if you come up with a mark that you have set your heart on but it has already been registered, is there anything you can do?

The simple answer is to abandon the mark and look for something else. Alternatively you could attempt to negotiate with the registered owner to allow you the right to use the mark. However, should you discover that the mark is not being used, you could apply to have it revoked.

The point of a trade mark is to identify the origin of goods or services. Quite simply, if a mark isn’t being used then it is not carrying out that purpose. The law therefore allows for marks that have not been "genuinely used" for a five year period, without a proper reason, to be removed from the Register.

The courts have unfortunately been left to speculate as to what is meant by "genuine use", having been given no guidance. In particular, the recent case of Laboratories Goemar SA and La Mer Technologies Inc addressed the issue of whether a certain level of sales had to be made, to satisfy the criteria.

The case concerned the sales in the UK by a French company which specialised in seaweed based cosmetic and dietary products sold under the mark LABORATOIRE DE LA MER. Sales were, however not very successful, only amounting to around £1400 for the relevant products. La Mar Technology Inc., an upmarket cosmetics brand, who themselves manufacture cosmetics with a marine constituent applied to have the trade marks revoked on the basis that such a small amount of use could not amount to "genuine use", no doubt hoping to then apply for a registration themselves.

The Judge, Justice Jacob, considering the case believed that the issue as to what constituted genuine use and in particular if a minimum threshold of sales had to be made, sufficiently important to justify reference to the European Court of Justice. Any ruling, however, is a long way off. In the meantime, however, we still have the benefit of Jacob’s opinion.

He felt that provided there was nothing artificial about a transaction under the mark then such use would amount to genuine use. Further, he said there was no lower limit of negligible, implying that there was no threshold number of sales needed to meet the genuine use requirement. However, the smaller the amount of use the more important it is for the owner to demonstrate that the use is not merely a token use done purely to validate registration. In other words use must be with the intention of creating a market in the goods and the mark, rather than the intention of satisfying the legal requirement for maintaining a registration. If this criteria is reached the level of sales is not significant.

At one time in the UK, under the previous Trade Mark Act, any use, regardless of the intention of the user was sufficient to validate a registration. Trade mark owners would therefore make token sales, the aim of which was merely to show use for registration purposes rather than establish the brand in the market. As a result of this many marks were artificially preserved on the Register, preventing others who might legitimately want to use them from obtaining registrations. The danger is, that if the European Court of Justice does not agree with the UK Court, this abusive practice could be reintroduced.

Alternatively, if the European Court set minimum limits for sales necessary to constitute "genuine use", the difficult problem of judging what those levels should be would come into play. Would only successful products will be capable of sustaining registrations ? How would the minimum levels be varied depending on the product being sold or the size of the organisation making the sales? All this would lead to uncertainty both for the trade mark owner and anybody making an application to have the mark revoked for non-use.

It is therefore very much hoped that the approach adopted by the UK courts is endorsed in Europe and the process for removing unused marks becomes clear.