UK: When Is Trade Mark Use ‘Genuine’?

Last Updated: 20 March 2008
Article by Lucy Harrold

The recent judgment of the Court of First Instance (CFI) in La Mer Technology Inc v the Office for Harmonization in the Internal Market (OHIM)1 examines in considerable detail the issue of what use amounts to sufficient proof of 'genuine use' of an earlier trade mark for the purposes of being able to rely on that mark to oppose a third party's Community trade mark application.

Background

This case arises from a Community trade mark application submitted by La Mer Technology Inc on 1 April 1996 for the word mark LA MER for various goods and services in Class 3. On 8 April 1998, Laboratoires Goëmar filed a notice of opposition to the trade mark application on the grounds of likelihood of confusion (under Article 8(1)(b) of Council Regulation No 40/94/EEC on the Community trade mark "the Regulation") based on the existence of earlier registrations of the LABORATOIRE DE LA MER word mark in France, the UK, Greece and an International registration with effect in Italy and Portugal. The opposition was based on certain goods in Class 3, covered by the earlier registrations including 'cosmetics of a marine products base'. The proceedings before the CFI were for annulment of the decision of the Second Board of Appeal of OHIM ("the Board"). The Board had upheld the Opposition Division's decision allowing Laboratoires Goëmar's opposition on the grounds that the earlier marks had sufficient 'genuine use' to form the basis of a successful attack on the application and, further, that the marks were confusingly similar.

Legal Issues

There were two legal issues before the CFI on appeal: (1) whether Laboratoires Goëmar's filed evidence was sufficient to show genuine use of its earlier marks within the meaning of Article 43(2) of the Regulation; and (2) whether or not the two marks were confusingly similar.

The CFI's Judgment

Genuine Use Of Earlier Mark

The Court noted that protection of earlier marks is not justified except where they are actually used and that applicants for Community trade marks may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the period of five years preceding the date of publication of the trade mark application. The CFI explained that the protection is "not to assess the commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale use has been made of the marks." The CFI set out the test for genuine use as follows:

  1. "There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it was registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark." (citing the ECJ decision in Ansul [2003]);
  2. Importantly, the mark must be used "publicly and outwardly";
  3. Regard must be had to all the facts and circumstances of the use including whether the use is warranted in the economic sector concerned to maintain or create a share in the mark, the nature of the goods or services, the characteristics of the market and the scale and frequency of use of the mark;
  4. Account must be taken of the commercial volume of the overall use as well as the period of use and frequency (see Sunrider v OHIM (VITAFRUIT) [2004] and MFE Marienfelde v OHIM (HIPOVITON) [2004]) although if the volume of sales is not high but the use is extensive or regular, one may be offset against the other;
  5. Thus, "even minimal use can therefore be sufficient to be deemed genuine, provided that it is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark" (see Ansul, VITAFRUIT and HIPOVITON); and
  6. In VITAFRUIT, the ECJ added that there is no minimum threshold of use. It just cannot be token, minimal or notional (see Ansul).

The CFI examined the evidence put forward by the other party in the proceedings before OHIM. The CFI held that the Board had not, contrary to the applicant's arguments, taken into account invoices made out after the reference period. Whilst it was true that the 10 invoices it looked at did not contain the earlier mark, this did not prove they were irrelevant for the purposes of proving genuine use because packaging supplied with them proved the goods were sold under the mark.

As for the categories of goods, the CFI held that soaps may also be classified as cosmetics when they are deemed to have cosmetic properties such as beautifying the skin or being perfumed. Bath additives may be soaps or cosmetics and the phials of, inter alia, liquid to help with weight loss could fall within Class 3 rather than Class 5 (i.e. nutritional additives for medicinal purposes).

The CFI concluded that the use was objectively such as to create or preserve an outlet for the products concerned and entailed a volume and frequency of use which was not so low as to be merely token, minimal or notional and dismissed the appeal.

Infringement Of Article 8(1)(b) Of The Regulation

The applicant appealed the finding of the Board that there was a likelihood of confusion between LABORATOIRE DE LA MER and LA MER arguing that they are visually, phonetically and conceptually sufficiently different to exclude any confusion. The CFI upheld the Board's decision that the goods are very similar. The CFI further upheld the Board's decision that the signs are similar. It held that the mark applied for is much shorter but there is some degree of visual similarity; the two signs are pronounced differently but there is some phonetic similarity because the two last syllables are identical. It weighed up the low distinctiveness of the word 'laboratoire' against the words 'la mer' which make it possible to distinguish the goods of one undertaking from those of another and concluded there is a strong conceptual similarity between the two signs stating: "the dissimilarity of the two conflicting signs regarding the first two words of the earlier mark is not sufficient to neutralise, in particular from a conceptual point of view, the similarity found between the most relevant part, in terms of meaning of the earlier mark and the sole verbal element of the mark applied for."

Finally, the CFI held that the degree of similarity between the goods and the marks in question was sufficiently high for there to be a likelihood of confusion between the marks. The appeal on this issue was therefore also dismissed.

Commercial Implications

This case reiterates the ECJ case law in Ansul on what amounts to genuine use of an earlier mark and gives a useful further set of facts from which to draw analogies when advising clients in similar situations. What remains clear is that it does not take much use to support a claim of genuine use, it just cannot be merely token, minimal or notional.

Footnotes

1. Case T-418/03 dated 27 September 2007.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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