Laboratoires Goemar SA v La Mer Technology Inc. (C-259/02)
| Jurisdiction | England & Wales |
| Judge | THE HON MR JUSTICE JACOB,Mr Justice Jacob,The Hon Mr Justice Blackburne |
| Judgment Date | 21 December 2004 |
| Neutral Citation | [2004] EWHC 2960 (Ch),[2003] EWHC 1382 (Ch) |
| Docket Number | Case No: CH 2001 APP 010568,Case No: Ch 2001 App 010568 |
| Court | Chancery Division |
| Date | 21 December 2004 |
[2003] EWHC 1382 (Ch)
The Honourable Mr Justice Jacob
Case No: CH 2001 APP 010568
CH 2001 APP 010569
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand, London, WC2A 2LL
James Mellor (instructed by Lane & Partners) for the Applicant
Guy Tritton (instructed by Withers) for the Respondent
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic
By a judgment and order of 19 th December 2001 I referred certain questions concerning the meaning of "genuine use" in Arts. 10(1) and 12(1) of the Trade Marks Directive (89/104) to the European Court of Justice for a preliminary ruling
By a letter of 22 nd May 2003 the Registrar of the Court of Justice inquired whether this Court wished to pursue the reference in view of the ruling of the Court of Justice in case C-40/01 Ansul. The Registrar further indicated that if the reference was not withdrawn, the Court was minded to invoke Art. 104(3) of its Rules of Procedure. Art. 104(3) applies where "the question referred is identical to the question on which the Court has already ruled, where the answer to such a question may be clearly deduced from existing case-law or where the answer to the question admits of no reasonable doubt." If the Article applies then the Court may give its decision by a reasoned order in which reference is made to its previous judgment.
I consulted the parties as to the course which I should take. Their joint submissions read as follows:
"Both sides are agreed that Ansul does not really answer the questions originally referred. To put the point another way, each side would no doubt interpret Ansul differently, requiring the UK Court (in the absence of any further guidance from the ECJ) to engage in a difficult exercise in trying to divine the nuances of the views of the ECJ. Ansul does not render the issues "acte claire".
Ansul does appear to provide an answer to question 5 —but that was not the central question in this reference. Ansul does not answer the central questions 2–4 (does one take the extent of use into account at all and/or is there a de minimis level and, if so, how does one judge it), nor the related question 6, nor question 7. Although Ansul answers (in part) the general question 1, the answer to question 1 remains incomplete because question 1 covers questions 2–4 in particular.
As an aside, consideration of the observations submitted to the ECJ in this reference indicates there are a range of views on the central questions 2–4. The range of views is not dispelled by the Opinion of A-G Colomer in Ansul and, we believe, is not dispelled by the Judgment.
Accordingly, both sides are agreed that the reference should not be withdrawn, although it would be possible to indicate that answers to question 5 is no longer required in the light of Ansul."
I agree with the parties. Save in relation to question 5 I do not think Ansul sufficiently answers the problem in this case. In particular the central questions 3 and 4 are not sufficiently addressed by the Ansul case. Putting the matter specifically Ansul does not deal with the question of whether there is a de minimis rule and, if so, what it is. Particularly what is the position when the use is tiny but has only a genuine commercial motive?
In the circumstances I withdraw question 5 (which is answered by Ansul) but ask the Court to rule upon the remaining questions and to do so without using the Art. 104(3) procedure.
On Appeal From the trade Mark Registry
In the Matter of the Trade Marks Act 1994 and
In The Matter of Uk Registered Trade Marks Nos 1338514 and 1402537 in the Name of Laboratories Goemar Sa and
In The Matter of Applications for Revocation thereof Nos 10073 and 10074 by La Mer Technology Inc
[2004] EWHC 2960 (Ch)
The Honourable Mr Justice Blackburne
Case No: Ch 2001 App 010568
Ch 2001 App 010569
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
James Mellor (instructed by Lane & Partners) for the Appellant
Guy Tritton (instructed by Withers) for the Respondent
Hearing dates : 30 November and 1 December 2004
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Mr Justice Blackburne:
Introduction
This is the resumed hearing of an appeal by La Mer Technology Inc ("La Mer"), a United States company, from a decision dated 19 June 2001 of Dr W J Trott, Principal Hearing Officer acting for the Registrar of Trade Marks.
The appeal arises out of an application dated 27 March 1998 by La Mer for revocation for non-use of UK Registered Trade Mark No 1,402,537 comprising the words LABORATOIRE DE LA MER for "perfumes and cosmetics containing marine products; all included in Class 3" of which Laboratories Goemar SA, ("Goemar") a French company, is the proprietor. In fact there had been two applications for revocation by La Mer, both of the same date (27 March 1998). The application relating to the Class 3 registration succeeded before Dr Trott to the extent that it related to perfumes. The other application concerned UK Registered Trade Mark No 1,338,514 in respect of the same words (and of which Goemar was also the proprietor) but for "pharmaceutical, veterinary and sanitary products, dietetic products for medical use; all included in Class 5 and all containing marine products". Dr Trott acceded to that application to the extent that it related to pharmaceutical, veterinary and sanitary products.
La Mer appealed both decisions, contending that Dr Trott should have gone further than he did and wholly revoked both registrations. The two appeals came before Jacob J who on 19 December 2001 allowed the appeal in relation to the remainder of the goods in the Class 5 registration (so that the registration was wholly revoked) but on the appeal in relation to the remainder of the goods in the Class 3 registration, referred to the European Court of Justice seven questions concerned within the meaning of "genuine use" as those words appear in Articles 10(1) and 12(1) of the Trade Marks Directive (First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks) and section 46(1) of the Trade Marks Act 1994 which, so far as relevant, gives effect in domestic legislation to those two Articles.
The reference resulted on 27 January 2004 in a so-called Order of the Court given by the Third Chamber of the Court of Justice ("the reasoned Order") which is a reasoned decision of the Court given under Article 104(3) of the Rules of Procedure of the European Court of Justice where the Court is of the view, as it was on this reference, that the answer to the question referred can be clearly deduced from existing case law or where the answer to the question admits of no reasonable doubt. In so proceeding, the Court considered that answers to six of the seven questions could be deduced from the full Court's judgment in Case C-40/01 Ansul [2003] ECR I-2439, [2003] RPC 40 delivered on 11 March 2003 (subsequent to the delivery of the reference) and that the answer to the seventh question left no room for reasonable doubt. The fifth question referred for the Court's ruling was later withdrawn.
The appeal, by now confined to the remainder of the goods in the Class 3 registration (cosmetics containing marine products), comes back before me with the benefit of the reasoned Order, Jacob J having in the meantime been appointed to the Court of Appeal.
The facts
I take the relevant facts from the judgment of Jacob J ( [2002] FSR 51) and, insofar as they are not set out in that judgment, from the decision of Dr Trott. There is no dispute about what the facts are. They are as found at the time of the hearing before Dr Trott in June 2001.
The trade mark for the products in Class 3 was applied for on 10 October 1989. It was entered on the register on 7 February 1992. Accordingly it had been on the register for more than five years at the date (27 March 1998) of the application for its revocation.
Goemar, the proprietor of the mark, was based in St Malo and specialised in seaweed products. It was in a modest, but not very small, way of business. One of its brochures claimed that it had sales in 25 countries and had quite a number of products and some patents.
Sales in the UK for the relevant period (the five years expiring on 27 March 1998) were very limited. They amounted to about £800 worth of goods which were accepted to be within the Class 3 registration. In addition there were about £600 worth of goods claimed to have been within the disputed Class 5 registration. Roughly £6000 of other goods, outside the two specifications, were also sold within the relevant period.
Of the £800 worth of goods within the Class 3 registration, the vast majority were by a delivery effected on or about 15 April 1997. There were none after 16 May 1997 and none before 14 November 1996. There were, in all, five deliveries of the Class 3 items. The items appear to have been in small containers (bearing the mark) with recommended retail prices of between roughly £5 and £30 each.
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