In a recent case in the High Court, Laboratories Goemar SA v La Mer Technology Inc, Jacob J. considered what level of use must be made of a trade mark by its owner to be sufficient to counter an application for revocation on the grounds of non-use. He decided it was a question of sufficient importance to refer it to the European Court of Justice (“ECJ”). However whilst so doing he also gave his own opinion that “provided there is nothing artificial about a transaction under a mark then it will amount to ‘genuine’ use. There is no lower limit of ‘negligible’.”
He found that even very slight use (£800 worth of sales) was sufficient in his eyes to defeat a revocation application. The proprietor had been “trying (albeit ineffectually) to build up a profitable trade under the mark in this country.”
The Trade Marks Directive 89/104 (and the UK Trade Marks Act 1994) provide that simply applying a trade mark for exportation purposes constitutes use and this led counsel for the trade mark owner to argue that no trade was in fact necessary for there to be “use”. However Jacob J. said this was not so, since such an act would only be “use” where the exportation was for commercial purposes.
Where the validity of any trade mark is challenged for non-use, the burden is on the proprietor to prove that use has actually occurred. Despite his comments on there being no de minimis test that could be used effectively, Jacob J. emphasised the importance of proving evidence of use carefully: “ … the smaller the amount of use, the more carefully must it be proved, and the more important it is for the trade mark owner to demonstrate that the use was not merely ‘colourable’ or ‘token’, that is to say done with the ulterior motive of validating the registration.”
In this case, evidence of £6,000 worth of sales had been produced, but when examined carefully, the evidence showed that only around 10% were in respect of the marks and goods in question. Jacob J. found that the proprietor did not prepare its evidence well “Those concerned with proof of use should read their proposed evidence with a critical eye - to ensure that use is actually proved - and for the goods or services of the mark in question.”
Whilst Jacob J.’s own opinion that any amount of use at all can be “genuine use” in the right context may come as a relief to trade mark owners, if the conclusions of Jacob J. are followed to the full by the ECJ, then they will put a heavy evidential burden on the proprietor of the mark to prove the motivation for, as well as the actuality of, sales where trade marks are challenged. This may involve them in extensive disclosure in such revocation applications.
The case also serves as a reminder to trade mark owners to restrict specifications to the goods or services that it genuinely intends to use the mark for; a point as important to remember when licensing the mark as when using it oneself.
We await the views of the ECJ with interest.
© Herbert Smith 2002
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