Genuine Use - news from the UK

1. Genuine Use - news from the UK Edward Smith Nathan Abraham

2. “Genuine” Use • The Netherlands uses the term ‘normal’. The French has ‘usage sérieux’, the Portuguese ‘uso sério’, the English ‘genuine use’ and the German ‘ernsthafte Benutzung’. The Italian uses the same adjective as the Spanish: ‘effettivo’. • Translated : “normal”, “serious”, “effective”, “genuine” these words have subtly different meanings in English- so not a great starting point !!

3. What is “genuine” use • ANSUL Case (C-40/01): •  where the mark 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 was registered, in order to create or preserve an outlet for those goods or services;

4. What is genuine use • genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark; • the condition of genuine use of the mark requires that that mark, as protected on the relevant territory, be used publicly and externally.

5. How to assess genuine use • regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned in order to maintain or create a share in the market for the goods or services protected by the mark; [But what does warranted mean ?]

6. How to assess genuine use • Have regard to all facts and circumstances, use must be in order to create or maintain a share; takes into account nature of goods and services, characteristics of the market, scale and frequency of use, commercial volume of use, length of the period over which the mark was used, frequency of use. These factors may be interdependent: ie low commercial volume offset by extensiveness or regularity

7. How to assess genuine use • Turnover cannot be assessed in absolute terms; there is no quantitative threshold; even minimal use can be genuine provided it is warranted. There is no de minimis rule (see Sunrider case C-416/04P)

8. How to assess genuine use • Does any non-token use qualify as genuine use ? According to the CFI it appears NOT given the “assessment” required. The [relative] assessment can however lead to uncertainty: • Sonia Rykiel (T-131/06) 432 Euros over 13 months for clothing held to be insufficient; • Boston Scientific (T-325/06) 19,901 Euros sufficient on the field of hollow fibre oxygenators

9. But contrast with…. • Laboratoires Goemar SA v La Mer [2005] ETMR 14 (on return from the ECJ to the UK Courts) • Para 48 • “Once a mark is “communicated” to a third party in such a way as can be said to be consistent with the essential function of a trade mark (see paras 36 and 37 of ANSUL), it appears to me that genuine use will be established” • [Communication doesn’t have to be with end consumer- wholesalers qualify]

10. The result in “La Mer” • £800 over 6 months in the field of cosmetics was deemed to be genuine.

11. In short…. • In the UK, any “non-token” use seems to qualify as “genuine”, but the CFI seems to be going deeper into analysing the relative amounts of use in relation to the trade concerned…….

12. Sant Ambroeus (BL O-003-08) – (on appeal) “A single transaction, as evidenced by the invoice to Portobello Foods Limited, is no more than token and such use cannot be held to be warranted in the economic sector concerned for the purpose of maintaining or creating a market share. This scale of trade is very small when considered in respect to the size of the food and drink industry as a whole.” At odds with the La Mer case ??

13. Contact details • edward.smith@ipo.gov.uk • nathan.abraham@ipo.gov.uk