When A Niggling Role Is Pretty Useful ...

After a long trek through the courts, La Mer Technology Inc v Laboratoires Goemar SA[2005] EWCA Civ 978 may move conduct keep to come upward to rest. Yesterday the Court of Appeal for England in addition to Wales allowed the merchandise score owner's appeal against a ruling that it had non made genuine role of its merchandise mark.

Goemar, a French companionship that made things out of seaweed, owned the U.K. registered merchandise score LABORATOIRE DE LA MER for perfumes in addition to cosmetics containing marine products. Goemar made exclusively rattling imited sales of LABORATOIRE DE LA MER products to a little firm that was its agent inwards the U.K. in addition to at that topographic point was no evidence of whatever sales beingness made to members of the populace every bit consumers or end-users. La Mer (part of the Estee Lauder group) sought to revoke Goemar's score on the the world of non-use of the score for a menstruum of v years. The registrar dismissed that application in addition to La Mer. The appeal approximate (Mr Justice Jacob) stayed the appeal and referred to the European Court of Justice for a preliminary ruling questions every bit to what quantity in addition to form of role are sufficient to show that a score has been lay to genuine use.

The ECJ meanwhile, having given a ruling on much the same questions inwards Case C-40/01 Ansul , gave its determination on this reference inwards the degree of an order, on the reason that the answers to the questions could live clearly deduced from its before judgment.

By the fourth dimension the High Court had the answers to its questions, Mr Justice Jacob had been promoted to the Court of Appeal in addition to a novel approximate had to live found: this was Mr Justice Blackburne. He ruled that at that topographic point had been no ‘genuine use’ of the score inwards the UK, having flora that genuine role of the score required that it come upward to the attending of end-users in addition to consumers during the relevant period. In his sentiment the acts of importation during the relevant menstruum past times an independent importer inwards to the U.K. of goods bearing the score did non past times themselves amount to genuine role of the mark; additionally, the proven role during the relevant menstruum was insufficient to practise a marketplace part for the goods protected past times the mark. He thence allowed La Mer's appeal in addition to revoked the merchandise score for non-use. Goemar appealed, contestation that the resultant of Blackburne J's judgment was to erect a quantitative in addition to qualitative exam for marketplace role in addition to marketplace part which was non railroad train past times the ECJ.

Allowing Goemar's appeal, the Court of Appeal held every bit follows:

* purely token role of a score did non count every bit genuine use, although it did non follow that every representative of non-token role would qualify every bit genuine use;

* 'internal' role past times the merchandise score owner, inside its ain business, did non count every bit genuine use;

* in addition to so long every bit the role of a score was neither token nor internal, imports past times fifty-fifty a unmarried importer could suffice for determining whether at that topographic point was genuine role of the score on the market;

* at that topographic point was no quantitative or qualitative exam for marketplace role in addition to marketplace share;

* inwards this case, the pocket-sized amount of quantities involved in addition to the to a greater extent than restricted nature of the import marketplace had non prevented the role of the score on the goods from beingness genuine role on the market.

has to concede that this approach is right. He likewise recommends a read of the recent Irish Gaelic Patent Office decision in Stefcom's merchandise mark, which takes a thoroughly sensible approach to the assessment of evidence of small-scale role of a merchandise mark. He wonders, though, whether consumers mightiness associate the little-used LABORATOIRES DE LA MER score alongside the to a greater extent than pop COCO DE MER brand.

More close seaweed here and here
Seaweed recipes here and here
La Mer here