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CASE COMMENT Background On 1 April 1996, La Mer Technology applied to register LA MER as a Community trade mark in goods in Class 3 including soaps, perfumery and essential oils. Laboratoires Goëmar filed a notice of opposition on the ground of likelihood of confusion under Article 8(1)(b) of the Community Trade Mark Regulation (40/94/EC) with their earlier word mark LABORATOIRE DE LA MER, registered nationally in France, the UK, Greece, and internationally with effect in Italy and Portugal, for goods in a variety of classes, including Class 3. La Mer put Laboratoires Goëmar to proof of genuine use of their earlier trade mark in respect of the goods cited in opposition, namely: “cosmetics of a marine products base” (France), “cosmetics containing marine products” (UK), “perfumes and cosmetics containing marine products” (Greece), and “cosmetics of a marine base” (International). Evidence was submitted that the mark had been genuinely used in Greece, France, Italy, Portugal and the UK. However, for procedural economy only the French registration was considered. The OHIM Opposition Division upheld Laboratoires Goëmar’s CASE COMMENT La Mer prompts useful definition of ‘token use’ Case T-418/03 La Mer Technology Inc v OHIM, 27 September 2007 (unreported). On upholding an OHIM Board of Appeal decision that there was a likelihood of confusion between the word marks LABORATOIRES DE LA MER and LA MER in respect of “cosmetics of a marine products base”, the Court of First Instance provides useful guidance on what constitutes “genuine use”, and in particular on the difference between “minimal use” and “token use”. In addition, the case contains interesting commentary on how the court will categorise and classify goods when considering genuine use. In an era where beauty products can be increasingly packaged in vials and capsules and tablets and supplements can be marketed as having cosmetic properties, it is becoming increasingly difficult to determine where the boundaries lie. opposition on account of a likelihood of confusion for all the goods concerned. That decision was upheld by the Board of Appeal which found that sufficient evidence had been provided to show genuine use and that there was a likelihood of confusion between the two marks. La Mer applied to the Court of First Instance to annul the Board’s decision. Genuine use The court’s approach to genuine use was as follows. First the mark must be used publicly and outwardly. Secondly, it must be used “in accordance with its essential function, which is to guarantee the identity of the goods created… in order to protect or preserve an outlet for those goods or services”. Thirdly, it does NOT include token use for the sole purpose of preserving rights conferred by the mark. Finally, there must be real commercial exploitation of the mark. In this respect, regard must be had to all the facts and circumstances such as whether such use is warranted in the economic sector concerned in order to maintain or create a share in the market; the nature of the goods and services; length of the period during which the mark was used; commercial volume of overall use; and frequency of use of the mark. Nonetheless the court made it clear that genuine does not have to mean large-scale. In this respect the court dismissed La Mer’s submission (based on Case C-40/01 Ansul [2003] ECR I- 2439) that use, even with a genuine commercial purpose, may be so minimal as to fail to satisfy the genuine use requirement in Article 43(3) of the Regulation. The CFI stated that the purpose of the provision was not to assess commercial success or to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see Espadafor Caba (VITAFRUIT) [2004] ECR II-5233, Case T-334/01 MFE Marienfelde v OHIM, and Vétoquinol (HIPOVITON) [2004] ECR II-2787). The court further stated that “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… when it serves a real commercial purpose, even minimal use can be sufficient to establish genuine use” (Sunrider v OHIM [2006] ECR I-4237 applied). The nature of the evidence The CFI then made some interesting observations on the nature of the evidence adduced. These were in response to La Mer’s submissions that much of the evidence provided by Laboratoires Goëmar was inadequate to prove genuine use and even that certain evidence should not have been taken into account in the earlier decision. La Mer put forward several arguments to support this view including, firstly, that much of the evidence made no reference to the mark. Secondly that some of the evidence produced was undated and so was not verifiably related to the five-year reference period, and finally that even if the evidence was sufficient to prove genuine use, that the mark had only been used on products whose function was similar, rather than identical, to the goods cited as justification for the opposition. On the first point, the court considered, for example, that the fact that the earlier mark was not referred to on 10 of 20 invoices submitted by 20 ITMA Review November 2007
Laboratoires Goëmar to support their genuine use case was irrelevant for the purposes of proving genuine use of that mark. Additionally, whilst the court did not go so far as to say that undated evidence should not be considered, its approach was to consider only evidence that was dated within the reference period or verifiably related to it. The CFI also refused to accept La Mer’s contention that some of the evidence of use should be disregarded because it related to non-cosmetic products. Article 43(2) states that the applicant for the mark may require of the opponent proof of genuine use of the opposing mark “in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition”. Laboratoires Goëmar’s opposition related to goods covered by their earlier registrations in respect of “cosmetics of a marine products base”. La Mer argued that soaps and bath additives were not cosmetics, and that nutritional supplements fell within Class 5 (pharmaceutical preparations etc) because they are taken internally. The CFI’s response was that soaps may also be classified as cosmetics when, in particular, they are deemed to have cosmetic properties such as beautifying the skin or when they are perfumed. The same applied to bath additives. In respect of the nutritional supplements, the court considered that the fact that the products were taken orally and not applied to the skin did not prove that the products were not cosmetic. The court commented that “the current tendency… is to market cosmetic products having… properties which are allegedly slimming or beautifying, and which are to be swallowed”. Packaging, it would seem is not conclusive – a tablet with a beautifying function may be cosmetic, equally “products presented in the form of phials or individually sealed quantities are not for that reason medical preparations”. Likelihood of confusion On a global assessment, the CFI agreed with the Board of Appeal that there existed a risk that the public November 2007 CASE COMMENT may believe that the goods in question came from the same, or economically linked undertakings, and that there was a likelihood of confusion between the marks in question. As to the similarity of the goods, the CFI considered that the Board of Appeal was “right to take the view… that “soaps, perfumery, essential oils, hair lotions, dentifrices, toiletries” under the mark applied for and “cosmetics of a marine product base” under the earlier mark were “very similar”. According to the CFI those products might be sold in the same outlets and be directed at an identical category of consumer. In addition, quite often the manufacturers of those products are the same. As to the similarity of the marks, the court reiterated the principle that “two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects” (see, for example, Case T-6/01 Matratzen Concord v OHIM [2002] ECR II-43). In the present case, the marks were partly identical. Taking into account the low distinctiveness of the word “laboratoire” compared to the words “la mer”, the CFI found the conflicting signs were similar particularly as the only element of the mark applied for, and the distinctive element of the earlier mark were identical. The CFI therefore held that a likelihood of confusion did exist due to the goods in question being partly identical and partly similar and the overall similarity between the two signs. Comment The CFI’s judgment provides useful clarification on several issues. For example, the standard for genuine use remains unchanged and relatively low; “minimal use” can be sufficient to establish genuine use provided it is not “token use” for the sole purposes of retaining the mark. Additionally, when determining genuine use of an earlier mark in relation to the goods for which that mark is registered, the court appears to avoid taking a narrow view of the types of goods that may be classified as cosmetics. It appears in this respect that the functional properties of a product are more important than how it is packaged or marketed; a pill may be cosmetic, a cream or lotion, medicinal. Having reached that decision in relation to proof of use, it is hardly surprising that the court also considered that the goods to which the opposing marks related were very similar. Teresa Neil, Hammonds, teresa.neil@hammonds.com ITMA Review 21
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