Laboratoires Goemar SA v La Mer Technology Inc. (C-259/02)
| Jurisdiction | England & Wales |
| Judge | Lord Justice Mummery,Lord Justice Neuberger,Mrs Justice Black |
| Judgment Date | 29 July 2005 |
| Neutral Citation | [2005] EWCA Civ 978 |
| Docket Number | Case No: A3/2005/0002 |
| Court | Court of Appeal (Civil Division) |
| Date | 29 July 2005 |
[2005] EWCA Civ 978
Lord Justice Mummery
Lord Justice Neuberger and
Mrs Justice Black
Case No: A3/2005/0002
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE CHANCERY DIVISION
MR JUSTICE BLACKBURNE
Royal Courts of Justice
Strand, London, WC2A 2LL
MR GUY TRITTON (instructed by Withers LLP)) for the Appellant
MR JAMES MELLOR (instructed by Lane and Partners) for the Respondent
Introduction
This appeal is about the application of the "genuine use" provisions in articles 10 and 12 of the Trade Marks Directive EEC/89/104 (the Directive), which were implemented in section 46 of the Trade Marks Act 1994 (the 1994 Act). At an earlier stage in these proceedings and in advance of rulings by the European Court of Justice on the interpretation of the Directive, Jacob J identified the question as what amount and kind of use will suffice to prove that a mark has been put to genuine use? See [2002] FSR 790 at 801.
The question arises in proceedings for the revocation of a registered mark ( LABORATOIRE DE LA MER) on the ground of non-use of the mark for a period of five years or more prior to the revocation proceedings. The use relied on by the registered proprietor of the mark was importation into the United Kingdom of a modest quantity of goods bearing the mark, but, for reasons explained later, there is no evidence that the goods bearing the mark ever reached consumers or end-users of the goods in the UK market. I have found the question whether there was "genuine use" of the mark a difficult one, on which my views have fluctuated in the course of the appeal.
On 22 March 2003 the Court of Justice delivered judgment in Ansul BV v. Ajax Brandbeveiliging BV [2005] Ch 97 ( Ansul) ruling on the interpretation of articles 10(1) and 12(1) of the Directive. The judgment came (a) after Dr WJ Trott (acting for the Registrar of Trade Marks) had heard the proceedings for revocation of the registered trade mark and, having observed (paragraph 37) that it was not "an easy decision to make," dismissed them (19 June 2001) on the ground that the use was real and enough to amount to genuine use of the mark during the relevant period; and (b) after Jacob J made his order on the hearing of the appeal from the Registrar referring a number of questions of interpretation to the Court of Justice under Article 234 of the Treaty (19 December 2001). The reference was made on the ground that a ruling of the Court of Justice was necessary to enable the court to give judgment on the appeal. The rulings requested related to the factors which should be taken into account when deciding whether a mark had been put to "genuine use " in a Member State within the Directive. Jacob J made it clear that, left to himself, he would decide that this was a case of genuine use and would dismiss the appeal accordingly.
On 27 January 2004 the Court of Justice (Third Chamber) gave its decision on the reference by Jacob J: [2004] FSR 38. The rulings were included in a reasoned order (Article 104(3) of its Rules of Procedure) rather than in a judgment, as the Court of Justice thought that the answers to the questions could be clearly deduced from its judgment in Ansul.
This appeal
This appeal is brought by Laboratoires Goëmar SA(Goëmar) from the order of Blackburne J dated 21 December 2004. The hearing of the appeal from the Registrar was resumed after the reasoned order of Court of Justice. It took place before Blackburne J, as Jacob J had been appointed to the Court of Appeal in the interval between his reference and the response of the Court of Justice.
Blackburne J allowed the appeal by La Mer Technology Inc (a US company which is part of the Estee Lauder Cosmetics Group) against the Registrar's decision dismissing its proceedings for revocation of Goëmar's mark. Blackburne J revoked Goëmar's registered trade mark as of 27 March 1998 for non-use. The trade mark (No B 1,402,537- LABORATOIRE DE LA MER) had been applied for on 10 October 1989 and on the Register since 7 February 1992 for "perfumes and cosmetics containing marine products; all included in Class 3."
Blackburne J concluded that there had been no "genuine use" of the mark in the United Kingdom within section 46 of the 1994 Act by Goëmar during the relevant period of five years before the application for revocation. In brief, he held that genuine use of the mark required that it come to the attention of the end-users and consumers during the relevant period; that the acts of importation during the relevant period by an independent importer into the United Kingdom of goods bearing the mark did not by themselves amount to genuine use of the mark; and that the proven use by the registered proprietor during the relevant period was not sufficient to create a market share for the goods protected by the mark.
This appeal is brought with the permission of Neuberger LJ given on 11 February 2005
The facts
Goëmar is a French company specialising in seaweed products from its base in St Malo. It appointed a small enterprise with which it had no connection, Health Scope Direct Ltd (formerly Meadow Breeze Ltd) of the Old Brewery, Banff on the Moray Firth in Scotland as its agent in the United Kingdom. The agent traded as "Health Scope Direct" until it ceased business and was struck off the register of companies on 21 October 1997.
Limited sales of the relevant products bearing the mark were made by Goëmar pursuant to five separate repeat orders placed by Health Scope Direct. The orders amounted to £800 in all. The sales took place over the six month period between 14 November 1996 and 16 May 1997. There were five deliveries of goods. The bulk of the deliveries were made on or about April 1997. The products imported were within the class 3 registration. They were packed in containers bearing the mark with recommended retail prices of roughly between £5 and £30 each.
There was no evidence of any sales of the goods to members of the public as consumers or end-users. The agent had been making preparations to sell the products by appointing members of the public as sub-agents selling via private parties, based on the "Tupperware " model, but there was no evidence that this method of sale to the public ever got off the ground.
The rulings of the Court of Justice
Articles 10 and 12 of the Trade Marks Directive EC/89/104 and section 46 of the 1994 Act govern the revocation of trade marks on the ground of non-use. As an implementing provision section 46 must be construed so as to be compatible with the Directive, as interpreted by the Court of Justice. A mark is liable to revocation if, within 5 years of registration, it has not been "put to genuine use" in the United Kingdom in relation to the relevant product.
Article 10 states—
"1. If, within a period of five years following the date of the completion of the registration procedure, the proprietor has not put the trade mark to genuine use in the Member State in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trade mark shall be subject to the sanction provided for in this Directive, unless there are proper reasons for non-use."
Article 12 states that a trade mark shall be liable to revocation if it has not, within a continuous period of five years, been put to genuine use in the Member State in connection with the goods in respect of which it is registered and there are no proper reasons for non-use. The evident purpose of the power of revocation for non-use is to prevent the Register from being cluttered up with unused marks, which would obstruct later traders wishing to use the marks and would create unnecessary conflict and confusion between the registered trade marks of traders and manufacturers of goods.
As the provisions of the Directive were implemented in similar terms in section 46 of the 1994 Act, I shall follow the example of Jacob J in working from the Directive rather than the 1994 Act. The relevant provisions must be given the same meaning in both measures.
The questions referred to the Court of Justice by Jacob J sprang from doubts voiced before him about the interpretation of "put to genuine use" in article 10: in particular, what criteria or factors should be taken into account in deciding whether a mark has been put to genuine use, what types of use can be considered and specifically whether importation by a single importer could count as genuine use.
The Court of Justice in Ansul and in the reasoned order in this case described the approach that should be followed by national courts in assessing whether there has been genuine use of the mark in the relevant period. Judgments of the Court of Justice on references under article 234 are not, of course, like the judgments of national courts which decide cases and from which it is possible to extract a ratio. I mention this obvious feature of the interpretative rulings of the Court of Justice because during argument there was the advocates' natural tendency to scrutinise closely the language of particular passages in Ansul and in the reasoned order which suited their respective arguments. The judgments of the Court of Justice on article 234 references must be read in a wider context. The accumulation of rulings develops a body of jurisprudence on the interpretation of EC legislation. This differs from the common law method of building up a body of case law from binding judicial precedents. The judgments of the Court of Justice should...
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