Gerber Foods International Litd v Gerber Products Co [2002] EWCA Civ 1888 (20 December 2002)

Gerber Foods International Litd v Gerber Products Co [2002] EWCA Civ 1888 (20 December 2002)

The correct test for bona fide use under section 26(1)(b) of the Trade Marks Act 1938 is whether the use was honest or genuine, not whether it was substantial by ordinary commercial standards. Substantiality and commercial standards may be relevant to assessing honesty, but are not separate requirements. The test marketing exercise in question was genuine and not a pretence, and thus constituted bona fide use.

Citation
[2002] EWCA Civ 1888
Parties
Applicant/appellant: Gerber Foods International Limited; Proprietor/respondent: Gerber Products Company
Jurisdiction
England and Wales
Judgment Date
20 December 2002
Procedural Posture
Appeal (second Tier, Court of Appeal, Civil Division) From High Court, Chancery Division, Trade Marks Registry / Judgment on Appeal
Outcome
Appeal dismissed
Legal Topics
Bona Fide Use of Trade Mark, Removal/rectification for Non Use, Interpretation of Trade Marks Act 1938 S.26(1)(b), Test for Bona Fide Use, Objective Vs Subjective Test for Use, Market Testing and Trade Mark Use
Intellectual Property Trade Marks Bona Fide Use of Trade Mark Removal/rectification for Non Use Interpretation of Trade Marks Act 1938 S.26(1)(b) Test for Bona Fide Use Objective Vs Subjective Test for Use Market Testing and Trade Mark Use

Case Brief

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Parties

Gerber Foods International Limited

Applicant/appellant

Gerber Products Company

Proprietor/respondent

Procedural Posture

Appeal (second Tier, Court of Appeal, Civil Division) From High Court, Chancery Division, Trade Marks Registry / Judgment on Appeal

Legal Issues

  1. 1 What is the correct test for 'bona fide use' under section 26(1)(b) of the Trade Marks Act 1938?
  2. 2 Does a limited test marketing exercise constitute bona fide use?
  3. 3 Is substantiality of use a necessary ingredient for bona fide use?

Ratio Decidendi

The correct test for bona fide use under section 26(1)(b) of the Trade Marks Act 1938 is whether the use was honest or genuine, not whether it was substantial by ordinary commercial standards. Substantiality and commercial standards may be relevant to assessing honesty, but are not separate requirements. The test marketing exercise in question was genuine and not a pretence, and thus constituted bona fide use.

Court Disposition

Appeal dismissed

Orders

  • The appeal by Gerber Foods International Limited is dismissed.
  • The ruling of the Vice-Chancellor on the Haywards Heath issue is upheld.