The decision of the Court of First Instance of the European Communities was handed down last week in Case T-418/03 La Mer Technology v OHIM - Laboratoires Goëmar (LA MER).
On 1 April 1996 - the day the Office for Harmonisation in the Internal Office opened for the receipt of Community trade mark applications - La Mer applied to register as a CTM the words LA MER for ‘bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils, cosmetics, hair lotions; dentifrices; toiletries’ in Class 3. Goëmar opposed, pleading a likelihood of confusion with its own earlier French, Greek, UK and international registrations of the LABORATOIRE DE LA MER word mark in Class 3 and various other classes, basing its opposition on cosmetics with a marine base and challenging La Mer's registration in respect of ‘soaps for the care of the human skin and the human body; perfumery, essential oils, cosmetics, hair lotions; dentifrices, toiletries, including creams, gels and lotions’.
La Mer asked for proof of use of the earlier trade marks on which the opposition was based. Goëmar submitted various documents to show that it marks had been genuinely used in Greece, France, Italy, Portugal and the United Kingdom, following which the Opposition Division upheld the opposition, even though the degree of use was arguably very small. For reasons of procedural economy, the Opposition Division based its decision on the French registration alone, considering it sufficient for the purpose of rejecting the application in relation to all the goods in question. The Board of Appeal dismissed La Mer's appeal and La Mer appealed.
The Court of First Instance dismissed La Mer's appeal, holding inter alia as follows:
* "To examine whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. In addition, the turnover and the volume of sales of the product under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the products or services on the relevant market. As a result, the Court has stated that use of the earlier mark need not always be quantitatively significant in order to be deemed genuine. Even minimal use can therefore be sufficient to be deemed genuine, provided that it is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark" (para.57).The IPKat can imagine how frustrated La Mer must be: eleven and a half years from its date of application and it is still blocked by an earlier trade mark which has, it appears, been little used. But the failure of Goëmar to make greater commercial use of its trade marks is a commercial decision that it is entitled to make. Merpel adds, one feels that there may have been a better way to resolve this dispute and that, if there wasn't, La Mer would have been better advised to choose a different trade mark and just get on with life.
* " ... it is not possible to determine a priori and in the abstract what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule, which would not allow OHIM or, on appeal, the Court of First Instance, to appraise all the circumstances of the dispute before it, cannot therefore be laid down ... " (para.58).
* "the Board of Appeal was entitled to conclude that the conflicting signs, each considered as a whole, are similar by taking into account in particular the fact that the only element of the mark applied for and the distinctive element of the earlier mark are identical ..." (para.127).
European Court of Justice ruling in C-259/02 between the same parties:
"1. Articles 10(1) and 12(1) of .. Council Directive 89/104 ... must be interpreted as meaning that there is genuine use of a trade mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by that mark. When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real in the course of trade, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark. When it serves a real commercial purpose, in the circumstances cited above, even minimal use of the mark or use by only a single importer in the Member State concerned can be sufficient to establish genuine use within the meaning of the Directive.Court of Appeal for England and Wales decision here (noted by the IPKat here)
2. While ... Directive 89/104 makes the classification of use of the trade mark as genuine use consequential only on consideration of the circumstances which pertain in respect of the relevant period and which predate the filing of the application for revocation, it does not preclude, in assessing the genuineness of use during the relevant period, account being taken, where appropriate, of any circumstances subsequent to that filing. It is for the national court to determine whether such circumstances confirm that the use of the mark during the relevant period was genuine or whether, conversely, they reflect an intention on the part of the proprietor to defeat that claim".
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More marine cosmetics here and here