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.
Laboratories Goemar SA and La Mer Technology Inc
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.