When is use 'Genuine'? - Laboratories Goemar SA v La Mer Technology Inc

Author:Ms Rachel Montagnon
Profession:Herbert Smith

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

(ìECJî). However whilst so doing he also gave his own opinion that

ìprovided there is nothing artificial about a transaction under a mark

then it will amount to 'genuine' use. There is no lower limit of


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

ìtrying (albeit ineffectually) to build up a profitable trade under the

mark in this country.î

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 ìuseî. However Jacob

J. said this was not so, since such an act would only be ìuseî 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: ì Ö 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


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 ìThose 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.î

Whilst Jacob J.'s own opinion that any amount of use at all can be

ìgenuine useî in the right context may...

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