Goemar SA v La Mer Technology [2001] EWHC 492 (Ch) (19 December 2001)

Goemar SA v La Mer Technology [2001] EWHC 492 (Ch) (19 December 2001)

Genuine use under the Directive and Act requires real, non-artificial trade; small sales may suffice if not merely token or for trade mark protection. The Class 5 products sold were not 'for medical use' as they were intended for healthy persons, not for treatment of disease. For Class 3, the sufficiency of limited sales to constitute genuine use is a significant legal question warranting reference to the European Court of Justice.

Citation
[2001] EWHC 492 (Ch)
Parties
Appellant/trade Mark Proprietor: Goemar SA (Laboratoires Goemar SA); Respondent/applicant for Revocation: La Mer Technology Inc
Jurisdiction
England and Wales
Judgment Date
19 December 2001
Procedural Posture
Appeal From Trade Mark Registry / Judgment on Appeal, With Reference to ECJ Sought for Class 3 Registration
Outcome
Appeal allowed in part; reference to ECJ for Class 3 registration; Class 5 registration partially upheld.
Legal Topics
Trade Marks, Revocation for Non Use, Genuine Use, Interpretation of Trade Marks Directive
Intellectual Property Commercial Law Trade Marks Revocation for Non Use Genuine Use Interpretation of Trade Marks Directive

Case Brief

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Parties

Goemar SA (Laboratoires Goemar SA)

Appellant/trade Mark Proprietor

La Mer Technology Inc

Respondent/applicant for Revocation

Procedural Posture

Appeal From Trade Mark Registry / Judgment on Appeal, With Reference to ECJ Sought for Class 3 Registration

Legal Issues

  1. 1 Whether limited sales constitute 'genuine use' under Art. 10 of Directive 89/104 and s.46(1) of the Trade Marks Act 1994
  2. 2 Whether dietary supplements sold fall within 'dietetic products for medical use' in Class 5 registration
  3. 3 Whether the Class 3 registration should be revoked for lack of genuine use

Ratio Decidendi

Genuine use under the Directive and Act requires real, non-artificial trade; small sales may suffice if not merely token or for trade mark protection. The Class 5 products sold were not 'for medical use' as they were intended for healthy persons, not for treatment of disease. For Class 3, the sufficiency of limited sales to constitute genuine use is a significant legal question warranting reference to the European Court of Justice.

Court Disposition

Appeal allowed in part; reference to ECJ for Class 3 registration; Class 5 registration partially upheld.

Orders

  • Appeal allowed for Class 5 registration to the extent of dietetic products not for medical use; registration maintained for those goods.
  • Class 3 registration: reference to European Court of Justice for guidance on 'genuine use' threshold.