# C_2004094EN.01001401.xml

| 17.4.2004 | EN | Official Journal of the European Union | C 94/14 |
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17.4.2004

EN

Official Journal of the European Union

C 94/14

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ORDER OF THE COURT

ORDER OF THE COURT

(Third Chamber)

27 January 2004

in Case C-259/02 (Reference for a preliminary ruling by the High Court of Justice of England and Wales, Chancery Division): La Mer Technology Inc. v Laboratoires Goemar SA, (1)

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(Article 104(3) of the Rules of Procedure - Trade marks - Directive 89/104/EEC - Articles 10(1) and 12(1) - Revocation of a trade mark - Notion of genuine use of a trade mark)

(2004/C 94/27)

Language of the case: English

In Case C-259/02: Reference to the Court under Article 234 EC by the High Court of Justice of England and Wales, Chancery Division for a preliminary ruling in the proceedings pending before that court between La Mer Technology Inc. and Laboratoires Goemar SA, on the interpretation of Articles 10(1) and 12(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), the Court (Third Chamber), composed of: J.N. Cunha Rodrigues, acting as President of the Third Chamber, J.-P. Puissochet (Rapporteur) and F. Macken, Judges; D. Ruiz-Jarabo Colomer, Advocate General; R. Grass, Registrar, has made an order on 27 January 2004, the operative part of which is as follows:

| 1. | Articles 10(1) and 12(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks 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. |
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1.

Articles 10(1) and 12(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks 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.

| 2. | While First 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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2.

While First 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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(1)  OJ C 219 of 14.09.2002.

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