Lost at Sea – Notorious La Mer Registration Successfully Sunk

I Bartlett | January 2017

Trade mark registrations in the UK which have been granted for more than 5 years can be challenged on the basis that they have not been used in the previous 5 years, and there are no excusable reasons for non-use.  Issues which may arise in such cases include whether the sales and marketing of the products or services concerned are on a sufficient scale, whether use of the “right kind” is shown, and whether the use is in respect of the goods or services covered by the registration.

In October 1989, the French company Laboratoires Goëmar registered the mark LABORATOIRE DE LA MER in the UK for various goods in class 3.   In March 1998 La Mer Technology (“LMT”), the Estée Lauder company behind the famous skin-care brand LA MER, attempted to cancel the registration on the grounds that it had not been used in the UK in the previous 5 year period for any of the products listed in the registration (and there were no special reasons for such non-use).  

At first instance, before the UK Trade Mark Office, Goëmar produced evidence that during the relevant 5 year period it had sold skin creams to the value of £800 in total bearing the mark in question to its sales agent in Scotland.  There was no evidence that the Scottish agent had ever put the products it purchased onto the UK market.  The question was whether this very small volume of sales, particularly in the absence of any marketing or sales to end consumers, was sufficient to justify the mark remaining on the UK register.  The tribunal ruled that, despite its very small scale, the use shown was sufficient to maintain the registration.  It therefore refused LMT’s request for cancellation as regards cosmetics.  LMT appealed to the High Court. 

Hearing the appeal, Mr. Justice Jacob, as he then was, asked the European Court of Justice for guidance as to whether a very small amount of use to a single sales agent is sufficient to maintain a registration.  The ECJ issued its decision in January 2004.  It referred to a judgment it had just handed down in the case of “Ansul” raising similar issues.  It reiterated in La Mer that there could be “genuine use” even where the use was “minimal” so long as, in the field of business in question, it was justified to preserve or create a share of the market in the goods or services protected by the mark.

The ECJ having made its pronouncement, the case was picked up again by the High Court, this time in the guise of Mr. Justice Blackburne.  Applying the ECJ’s directions set out in its decision, the judge found that the sales had been made only to Goëmar ’s UK distributor and although that distributor was based in the UK, those sales were not in themselves aimed at “preserving or creating a UK market share”, they were effectively “internal use”.  He therefore allowed LMT’s appeal and ordered Goëmar’s registration be revoked.  Goëmar appealed to the UK Court of Appeal. 

In a decision handed down in July 2005, seven years after the proceedings commenced, the Court of Appeal found Mr. Justice Blackburne had gone too far.   It found the “market” referred to in the ECJ’s decision included importers, distributors, wholesalers and sales agents, not just end consumers.  The appeal was therefore allowed and the order of the UK IPO tribunal to uphold Goëmar’s registration was reinstated.  LMT requested, but was refused, permission to appeal to the UK’s House of Lords (now “The Supreme Court”).  Goëmar’s registration remained on the register in respect of “Cosmetics containing marine products; all included in Class 03.”

The decision of the ECJ, in what has become known as “La Mer”, along with its contemporaneous decision in “Ansul”, is now famous amongst trade mark practitioners in Europe.  The guidance it gives is referred to in virtually every case where revocation for non-use is contested. 

In July 2015, Beck Greener was asked by Estée Lauder’s in-house legal department to review the position and to advise on the prospects of a renewed action to remove the registration.  By this time the registration for LABORATOIRE DE LA MER was owned by Goëmar’s successor in business, Laboratoire de La Mer SARL (“LDLM”).  Although Beck Greener had not been involved in the original proceedings, it conducted new investigations into LDLM’s activities in the UK.  These identified two products it appeared LDLM had marketed in the UK, namely RESPIMER (a product for treating nasal congestion) and AUDICLEAN (for treating ear wax).   Beck Greener advised that these products were unlikely to fall within the meaning of “cosmetics” for the purposes of trade mark law, and sales of such products by reference to the mark in question should not therefore support the registration. 

Revocation proceedings were commenced in September 2015.  The action was contested by LDLM, which filed evidence of its UK sales and marketing of RESPIMER and AUDICLEAN.  LDLM argued that its products were cosmetics because they fell within the definition of the term set out in Article 2 of the EU Regulation (EC 1223/2009) regulating the EU cosmetics industry, namely:

“‘cosmetic product’ means any substance or mixture intended to be placed in contact with the external parts of the human body (epidermis, hair system, nails, lips and external genital organs) or with the teeth and the mucous membranes of the oral cavity with a view exclusively or mainly to cleaning them, perfuming them, changing their appearance, protecting them, keeping them in good condition or correcting body odours;”

Pursuant to that definition, LDLM’s lawyers argued that “Audiclean is a substance intended to be placed in contact with the epidermis of the ears with a view to cleaning and protecting the ears and keeping them in good condition” and “Respimer is a substance intended to be placed in contact with the mucous membranes of the nasal/oral cavity with a view to cleaning and protecting them and keeping them in good condition.”

Beck Greener referred the tribunal to the decisions of Mr. Justice Arnold in Omega Engineering Incorporated v Omega SA [2012] EWHC 3440 (Ch), Aveda Corporation v Dabur India Limited [2013] EWHC 589 (Ch) and other authorities confirming that specifications of goods and services in trade marks must be given their “natural and usual meaning”.  The natural and usual meaning of the term “cosmetic” is a preparation for use in beautifying the face, skin or hair.  Accordingly, argued Beck Greener, the definition of “cosmetics” in the Regulation is irrelevant to construing the meaning of that term as it appears in LDLM’s registration. 

Beck Greener further argued that RESPIMER and AUDICLEAN were not within the definition of “cosmetics” given in the Regulation in any event as they were not marketed “with a view exclusively or mainly” to cleaning, perfuming, changing appearance, protecting, keeping in good condition or deodorising the skin or the body.  Rather, they were specifically sold for treating or avoiding medical conditions.  Indeed, both RESPIMER and AUDICLEAN applicators were stated by LDLM to be “medical devices”.

In a decision issued on 7th December 2016, the Hearing Officer Mr. George Salthouse agreed with LMT.  He found that RESPIMER and AUDICLEAN were medical products and were outside the scope of the term “cosmetics” listed in the registration. He ordered that the registration be revoked as of 1st September 2015 and that LDLM pay LMT its costs.

Ian Bartlett of Beck Greener, instructed by Estée Lauder’s in-house legal department, acted throughout for La Mer Technology, Inc.