England and Wales Court of Appeal (Civil Division) Decisions

IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT
CHANCERY DIVISION
THE TRADE MARKS REGISTRY
The Vice Chancellor

		Royal Courts of Justice Strand, London, WC2A 2LL
		20 December 2002

Lord Justice Auld :

1. This is a second tier appeal by Gerber Foods International Limited ("Foods"), an applicant for removal from or rectification of two entries of Gerber Products Company ("Products") on the Register of Trade Marks on the ground, as provided by section 26(1)(b) of the Trade Marks Act 1938, that there had been no "bona fide use" of the marks in question for five years up to a month before the application. There is also a cross-appeal by Products, which only falls for determination if Foods succeeds on the main issue in its appeal.
2. The 1938 Act was repealed and replaced, with effect from 31^st October 1994, by the Trade Marks Act 1994, implementing Council Directive No. 89/104/ EEC of 21^st December 1988. But as the period of alleged non-use in this case preceded the coming into force of the new legislation, the 1938 Act governs the matter. Whilst the 1994 Act will fall for interpretation in accordance with European law, the meaning established by the courts of "bona fide use" under the 1938 Act may be of some relevance to – or "provide a general feel" for the interpretation and application of the closely corresponding test of "genuine use" replacing it in section 46(1) of the 1994 Act; see the treatment of the topic in Kerly's Law of Trade Marks And Trade Names, 13^th ed. (2001), paras. 9-40, 9-41 and 9-60 to 9-63.
3. The primary question for determination in the appeal is the meaning and application of the test "bona fide use" of a trade mark under section 26(1)(b) so as to defeat an application for removal or rectification based on non-use. In particular, the issue is whether, as Foods contends, the test is an objective one of "genuineness", including substantiality judged by ordinary commercial standards and not, or not just, a subjective test of honest intent or absence of pretence. The factual issues giving rise to that issue were whether a short and limited test marketing exercise in Sussex amounted to such a use ("the Haywards Heath issue") and, if not, whether the registration should be limited under section 26(2)(b) to another and undoubtedly bona fide use confined to a particular area ("the US Bases issue").
4. Section 26(1), so far as material, provided that:

"… a registered mark may be taken off the register … on the ground …-

…(b) that up to the date one month before the date of the application a continuous period of five years or longer has elapsed during which the trade mark was a registered trade mark and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being: …"

5. At first instance, the Registrar's Hearing Officer found for Foods on the Haywards Heath issue and granted its application for removal of Products' entries from the Register. Notwithstanding his express finding that Products' use had not been a "fictitious or colourable use to protect the registration", he held that it was not a bona fide use of them within the relevant five years period. He also held that, if he was wrong about that, he would find that the US Air Bases use was sufficient only to justify a limited registration under section 26(2)(b).
6. On appeal, which was by way of a review under section 51 of the 1938 Act, the Vice-Chancellor held on 18^th March 2002 that the Hearing Officer had erred in his interpretation of the meaning of "bona fide use" and in his application of it to the Haywards Heath issue. That holding was sufficient to dispose of the appeal in Products' favour. The secondary US Bases issue as to limitation of registration under section 26(2)(b) became academic. However, had Foods succeeded on the primary issue, the secondary issue whether the US Bases use should be disregarded or regarded as sufficient only to justify a limited registration would have arisen. The Vice-Chancellor indicated that he would have held that there was a jurisdiction to limit the registration but that, given his, the Vice-Chancellor's, view on the Haywards Heath issue, the Hearing Officer should not have exercised it.

The Facts

7. I draw liberally and with gratitude on the Vice-Chancellor's summary of the undisputed facts. Products was incorporated in 1901 in the State of Michigan, USA, and for many years it marketed and sold baby foods under the brand name "Gerber" with or without an accompanying device of a baby's head. In 1968 and 1973 it was registered as the proprietor of those marks in respect of class 5. From 1965 to 1979 its baby foods were sold in the United Kingdom through a licensee. In 1979 the licensee withdrew from the United Kingdom market, but Products was unable to terminate the licence and, because the licence was exclusive, could not itself market the products in this country.
8. Foods is the principal trading company in the Gerber Foods Group which, since 1925, has traded in the United Kingdom buying and selling food and drink under the brand names "Gerber" and "Gerber Foods". In July 1988 and July 1992 Foods sought the registration of "Gerber Pride" and "Gerber" in respect of classes 29, 30 and 32 and class 5 respectively. The Trade Marks Registry cited Products' registered marks of "Gerber" and "Gerber" with the device of the baby's head against the applications, prompting Foods to make this application under section 26(1)(b) for removal of Products' marks from the Register because of non-use.
9. Before the Registrar's Hearing Officer, Products relied on two uses. The first was a test marketing exercise carried out in the Haywards Heath area in Sussex in August 1989. The exercise consisted of the supply to six stores of an identical selection of seven different baby foods labelled "First Foods" in conjunction with the word "Gerber". Some 100 dozen jars of baby food were sold for just under $300, the invoices all being dated on one day, 8^th September 1989. In anticipation of re-entering the baby food market in the United Kingdom, Products had applied shortly before, on 18^th August 1989, for registration of the Gerber mark in the particular style then used and also for registration of the mark "First Foods" in the same class. The second use was sales of its products to five United States Air Force bases in England, though it is said by Foods that such use was only proved at one base – Lakenheath in Norfolk.
10. As to the Haywards Heath test marketing use, the Hearing Officer decided that Foods had made out a prima facie case of non-use and that Products had not established a sufficiently substantial use to be bona fide within section 26(1)(b). As to the US Air Bases use, he held that it should be disregarded because it did not fall within that provision, alternatively, that if it did, the registration should be retained but be limited under section 26(2)(b) so as to confine its effect geographically to that specialist market. He also concluded that there was no ground for refusing rectification in the exercise of discretion allowed to him by section 26(1).
11. On appeal to the Vice-Chancellor, he reversed the Hearing Officer's ruling on the strength of the Haywards Heath use alone, holding that the latter had wrongly treated substantiality of use as the test of "bona fide use" rather than its honesty. He also held, as I have said, that the Hearing Officer had jurisdiction to limit the registration geographically but that he should not have done so on a proper view of the Haywards Heath use.
12. Foods challenges the Vice-Chancellor's ruling on the Haywards Heath point, maintaining that the effect of the authorities is that applied by the Hearing Officer and rejected by the Vice-Chancellor, that the bona fide test is an objective one of "genuineness" judged by ordinary commercial standards and not, or not just, a subjective test of honest intent. Products challenges his alternative finding that the Hearing Officer had power under section 26(2) geographically to limit the registration. Foods resists that contention, maintaining that the use was so modest that, if not discounted completely, it should be limited, as the Hearing Officer had decided, to the US Bases market or disregarded as being a use within the United States not the United Kingdom.

"Bona fide use" -The Authorities

13. The nature of the test, "bona fide use", for this purpose has been a recurring question in United Kingdom trade mark law for some sixty years, in particular as to whether substantiality of use is a necessary ingredient in every case or simply a possible material consideration depending on the circumstances of each case. There have been a number of judgments at first instance and in the Court of Appeal, mostly indicating that there is no all-purpose definition of bona fide use in this context and that each case should be decided on its own facts. A feature of this jurisprudence, to which the Court of Appeal's judgments in Electrolux Ltd. v. Electrix Ltd. (1954) 71 RPC 23, gave impetus, has been the use of such explanatory terms as: not "merely spasmodic or temporary", "commercially speaking … an ordinary and genuine use", "substantial" and "real commercial use on a substantial scale". One or more of such terms, variously used by members of the Court in that case and prompted by its own facts, have subsequently tempted practitioners and, possibly, some judges to elevate them into a general requirement of the test regardless of circumstance. The Hearing Officer referred to most of the authorities and so did the Vice-Chancellor, who, after conducting a thorough analysis of them, said at para 21:

"I do not think that these cases demonstrate two streams of authority as counsel for Products suggested so much as a single stream showing the problems of application in the different circumstances which arise. In particular, I do not read the decision … in Electrolux … as laying down a principle that to constitute 'use' within section 26(1)(b) it must be shown to be real commercial use on a substantial scale. The issue in that case was not whether there had been any use but whether such use was bona fide. In my view in all these cases there are two questions (1) Has there been a use of the mark within the relevant period? And, if so, (2) Was such use bona fide?"

14. I do not consider that I can improve on the Vice-Chancellor's analysis of the authorities and confine myself to a few comments of a general nature. I agree with him that the effective starting point is the Court of Appeal's decision in Electrolux, a case in which there was substantial use and also a desire by the user to gain an advantage from it in infringement proceedings. The Court held that the use was bona fide. In doing so, all three members of the Court held back from attempting any general or all-purpose definition or catalogue of facts necessary to constitute bona fide use and approached the case on its own particular facts. The nearest any of them got to a definition in the sense of the use of different terminology for the same notion was Sir Raymond Evershed, MR, who, at 36, said that it could not be a "pretended use", and Morris LJ who, at 42, said that the Legislature had in mind a "genuine" use, that is, one that was not "fictitious or colourable".
15. The Court found, on the facts of the case, that the use was bona fide or genuine, and, therefore, not pretended, because: it was "not merely spasmodic or temporary"; that, "commercially speaking, it was … an ordinary and general use" and that it was "substantial" (per the Master of the Rolls, at 36, Jenkins LJ, at 41); and that, on the evidence, "the volume and extent of the use … judged by ordinary commercial standards" was such as to make it a "genuine use" (per Morris LJ at 42). But I do not read those various references as providing a generally applicable blue-print for what amounts to bona fide use in the context of section 26(1)(b) or as a requirement of some objective test of "genuineness" as distinct from an honest use or one that is not a pretence. As Whitford J. was later to observe in Bon Matin Trade Mark [1989] RPC 537, at 543, "it was not a case in which the court had to consider the question as to substantiality because plainly nobody could have suggested that the use in question was not reasonably substantial". Nor do I believe that this Court, in its references to them in Imperial Group v. Philip Morris ("Nerit/Merit") [1982] FSR 72 (which concerned registration "without any bona fide intention … and no bona fide use" under section 26(1)(a)), in particular Lawton LJ at 79-80, so regarded them. Equally and with respect, I do not consider Brightman LJ's distinction in that case, at 91, between the dictionary meaning of the adjectival term "bona fide", meaning "genuine", and the noun "bona fides", meaning "honest intention", to be of help in construing the ordinary and natural meaning of "bona fide use" in section 26(1)(b).
16. Thus, in my view, the ratio of the Electrolux case was that "bona fide use" for this purpose means use that is honest or genuine in the ordinary day to day meaning of those words, or, referring once more to Sir Raymond Evershed MR's terminology, "not pretended". It was undoubtedly part and parcel of the ratio that substantiality of use judged by ordinary commercial standards, depending on the nature and circumstances of the use, may be relevant to determining whether it was in fact bona fide, but not that such factors are separate or additional ingredients of the definition.
17. The subsequent jurisprudence of the High Court in its originating and appellate jurisdiction appears to have supported and given effect to that interpretation of the Electrolux ratio. There are cases in which, as in Electrolux, the court has held on the facts that the substantiality of use present was material to the question of the bona fides of the use; see e.g. Levi Strauss v. Shah [1985] RPC 371 (Whitford J.). In other cases insubstantiality has been a relevant factor going to determination of the motive for the use, for example in trade mark protection programmes designed simply to protect the proprietor against a non-use attack; "Nerit/Merit" and Concorde Trade Mark [1987] FSR 209. In other cases the courts have held that insubstantial use may amount to bona fide use, for example: on a single sale or supply, NODOZ [1962] RPC 1 (Wilberforce J.) and VAC-U-Flex Trade Mark [1965] FSR 176 (Hearing Officer); or on two occasions, one in relation to a price list and the other in respect of promotional literature, Bon Matin Trade Mark [1989] RPC 537 (Whitford J.); or only some very small sales, La Mer Technology Inc. Laboratoires Goemar SA 19^th December 2001, unreported (Jacob J.), a case as to "genuine" use under section 46 of Trade Marks Act 1994,
18. There are two recent statements of the law usefully summarising and in a similar way the effect of the jurisprudence, the first by Whitford J., albeit obiter on this issue, in the Bon Matin case and the second by Jacob J, also arguably obiter, in La Mer. In Bon Matin, Whitford J said, at 543.

"… the substantiality of the use is undoubtedly a relevant factor to be considered and at the end of the day one has got to consider every relevant factor. It must always be remembered that what one is directed to by section 26 of the Act is the question as to whether there has been a bona fide use. Although the extent of the use is one factor which may be of significance, some of those factors may lead to the conclusion that although the use could not in the commercial sense be described as anything other than slight, nonetheless it may be appropriate to reach a conclusion, in the light of the circumstances as a whole, that the use ought to be regarded as bona fide."

19. In La Mer, which was decided after the Hearing Officer gave his decision, Jacob J. said, at paragraphs 25 –27 after referring to the Nerit/Merit case and the former practice of large companies of undertaking small sales purely as part of "trade mark protection programmes":

"25. Following that case at least some companies dropped trade mark protection programmes. Whether they have been revived following the introduction of the CTM [Community Trade Mark] and the new European trade mark laws I do not know. I hope they have not, for it seems to me that the position as regards intention behind the use is a major factor in deciding whether a use is 'genuine' within the meaning of the European legislation.

26. In other English cases, where there was no question of a hidden motive behind the use, the courts were prepared to regard even small quantities of sales under the mark as sufficient to constitute bona fide use. A little use coupled with genuine intention to establish a market in goods under the mark would suffice (Bon Matin …)

27. Thus under our old law there was no rule of de minimis. If a use was only slight, that might, depending on other circumstances, show that the trader was not genuine in his activities, as for instance in the Nerit case or another similar case, Concord TM …. One would compare the use actually made with the size of the organisation, how it and similar entities normally went about marketing and so on. A big trader who had made only limited sales would particularly have to explain what was going on. If the main or a principal motive was trade mark protection rather than simply making sales under the mark, then the use was not 'bona fide'."

20. Those observations were obiter in the sense in that they referred to the old law as to "bona fide use" and the case was concerned with and governed by the new European legislation and the 1994 Act as to "genuine use". However, they are particularly authoritative given the great experience of Jacob J in this field.
21. Accordingly, I respectfully agree with the Vice-Chancellor, in paragraph 21 of his judgment, that the Court of Appeal in Electrolux did not lay down a principle that to constitute "use" within section 26(1)(b), it must be shown to be use on a substantial scale judged against commercial standards. I also agree with him that the cases following it do not contain different propositions of law, but are instances of application of the Electrolux ratio in different circumstances.

The rulings below on the Haywards Heath issue

22. When the matter came before the Hearing Officer, the facts, as I have said, were not in dispute, in particular, as to the honesty of Products' intention in undertaking the test marketing exercise, using the Gerber mark, to examine the viability of re-entering the food market with its "First Foods" brand. The Hearing Officer summarised the effect, as he saw it, of the jurisprudence prior to La Mer:

"27. Having regard to the above authorities it seems to me that I should approach the matter on the basis that bona fide use must be real or genuine and not 'fictitious or colourable'; it must be considered in a commercial context; substantiality is a factor but it does not necessarily have to be a large scale use; and all relevant factors must be taken into account. I note particularly Morris LJ's words in the Electrolux case 'It is of course clear that when the phrase "bona fide" is used, its context must be considered when deciding what is its meaning'. That comment may have had particular application in that case in considering the difference between genuine and artificial use but it is, I think, equally relevant to consider the overall context in cases where (as here) there is no real suggestion that the use passes the honesty of use test but still has to be considered against the other criteria identified by the Courts. Thus it might be argued that modest sales linked to the establishment of a longer term basis for trade (an agency or distributorship arrangement for instance) may count for more than a larger opportunistic or isolated trade that is not intended to give the proprietor an ongoing commercial presence in the UK market (the sort of 'spasmodic and temporary' trade alluded to in Electrolux). But generalisations of any kind are fraught with difficulties. I do not for instance read the above reference in Electrolux to mean that occasional sales are incapable of constituting bona fide use. Clearly some items of capital equipment are occasional purchases only and an irregular pattern of sales will result. At the other extreme spasmodic sales of, say, low value consumer goods (where a more regular trade might be expected) may face a rather stiffer test if such use is to be regarded as bona fide. No doubt Whitford J had such considerations in mind when he said in Bon Matin that 'at the end of the day one has got to consider every relevant factor'." [my emphasis]

23. The Hearing Officer, in including in that passage the notion that use may be honest "but still has to be considered against the other criteria identified by the Courts", laid the ground for his later reasoning and conclusion that bona fide use included for this purpose two elements, a subjective one of honesty of purpose, which, he found, was present, and an objective one of substantiality of use, which, he found, was not.
24. In paragraph 29 of his decision, the Hearing Officer, in summarising the nature and extent of the test marketing exercise, said that it "was consistent with what one might expect from a market testing process" and with "an attempt to gauge store and customer reaction and preferences". However, in paragraph 30 he stressed the limited geographical nature of the use, the smallness of the sums involved and the fact that the exercise was likely to have been directed mainly towards testing Products' "First Food" range of goods notwithstanding that the mark "Gerber" also appeared on the label of the goods. And in the following passage, he mentioned other aspects of the insubstantiality of use leading him to conclude that, however honest Products' use may have been, its insubstantiality prevented it from being a bona fide use of the mark:

"… There is nothing to say how this test marketing was presented to the public other than the branding on the label. More significantly perhaps there is no evidence to suggest that it was ever followed up or for instance that it took place concurrently with attempts to establish a longer term basis for trade through agency or distributorship agreements or supply from existing European distributors if the problems with … the former licensee … were continuing. I bear in mind also that with a product such as baby food it is likely to be vitally important to establish a continuing presence in the market to meet customer expectations. I do not mean to suggest by this that the test marketing was 'fictitious or colourable' use to protect the registration. I do not think that was the case. I have, however, come to the view that the low level of sales taken together with the one-off nature of the trade and absence of follow-up activity either at the time or in the intervening years must mean that it cannot be held to be bona fide use." [my emphases]

25. Products' appeal to the Vice-Chancellor, which, as I have said, was by way of review under section 51 of the 1938 Act, did not impugn any of the Hearing Officer's findings of fact. The Vice-Chancellor, in paragraph 25 of his judgment reversing the Hearing Officer's decision on this issue, held that his conclusion was contradictory and wrong in law since, if, as was plainly the case on the evidence, the test marketing was not 'fictitious or colourable', it must have been bona fide. He said that the Hearing Officer's conclusion could only be justified if "use" for the purpose of section 26(1)(b) "must be not only bona fide but real commercial use on a substantial scale", an implication not warranted from the judgements in the Court of Appeal in Electrolux or succeeding jurisprudence.
26. Before I turn again to the issue as to the meaning in law of "bona fide use" in this context, there is a question whether the Vice-Chancellor misinterpreted the Hearing Officer's reasoning causing him wrongly to regard it as contradictory.
27. Mr. David Young, QC, for Foods, suggested that there was no inconsistency between the Hearing Officer's finding that the test marketing was not a "'fictitious or colourable' use to protect the registration" and his conclusion that the use was nevertheless not bona fide. He drew attention to the Hearing Officer's observation at the beginning of paragraph 30 that the test marketing was likely to have been directed mainly towards testing Products' new range of goods under the mark "First Foods", albeit in conjunction with the new Gerber mark, for the registration of both of which Products had applied shortly before. And he suggested that it was that exercise that the Hearing Officer must have had in mind when he later abjured any suggestion that it was a "'fictitious or colourable' use to protect the registration". Mr. Young said that, as the appeal to the Vice-Chancellor was on a point of law only and that, as the Hearing Officer had not found in terms that Products was trying to get back on the market by the use of the mark "Gerber", Products could not by way of appeal to the Vice-Chancellor overcome that lack of finding. Mr. Michael Bloch, QC, for Products, challenged that suggestion. He pointed out that the Vice-Chancellor had set out, in paragraph 24 of his judgment, the passage from paragraph 30 of the Hearing Officer's decision, qualifying his conclusion that the test marketing was not "fictitious or colourable" with the words "to protect the registration", and maintained that the Vice-Chancellor had rightly interpreted them as including a reference to protection of the Gerber mark in the Elextrolux sense.
28. In my view, the Vice-Chancellor was entitled, in the exercise of his power of review under section 51 of the 1938 Act, to a margin of appreciation in his interpretation of the Hearing Officer's reasoning. However, I do not consider that there is any realistic possibility that he misunderstood the Hearing Officer's reference in paragraph 30 of his decision to "'fictitious or colourable use' to protect the registration". As the Hearing Officer had acknowledged in paragraphs 29 and 30 of his decision, the manner of the exercise in which the Gerber mark appeared with the "First Food" brand name on the labelling of the test products was consistent with what might be expected of a market testing process. His acceptance that that use was not a "'fictitious or colourable' use to protect the registration" cannot sensibly or relevantly, in its context, be directed to the sought registration of a "First Foods" mark. In his addition of the words "to protect the registration", he clearly had in mind the use of the Gerber mark. In my view, there was a plain contradiction in the Hearing Officer's conclusion that, though the test marketing was not "'a fictitious or colourable' use to protect the registration" - and, therefore not a pretence - it was nevertheless not bona fide. As the Vice-Chancellor observed, the contradiction could only be avoided if "use" for this purpose had to be substantial as well as bona fide.

"Bona fide use" – the submissions in the appeal

29. Mr. Young prefaced his submissions by saying that the question is whether any sales, no matter how trivial, of goods under a trade mark are sufficient to defeat an application for removal from the register. He submitted that, on a proper reading of Electrolux and some of the other authorities, the test of bona fide use is not a subjective one of honesty of intention or motive, but an objective one of "real and ordinary use judged by commercial standards", or a combination of the two. Relying on Jacob J's neat synopsis of the effect of some of the English cases in paragraph 26 of his judgment in La Mer that "a little use coupled with a genuine intention to establish a market in goods under the work would suffice", he submitted that even where there was "no hidden motive" or no "fictitious or colourable" use, a "little use" would only suffice to justify retention on the register if it was coupled with "a genuine intention to establish a market in goods under the mark". He maintained that the Hearing Officer adopted that approach in paragraph 30 of his decision in holding that the low level of sales, the one-off nature of the trade and the absence of any follow-up activity meant that the use could not have been bona fide. Whilst eschewing any suggestion that substantiality of use was a necessary constituent of every bona fide use, he nevertheless also relied on the reference by Sir Raymond Evershed MR in Electolux to the use in that case not being "spasmodic or temporary", to support his contention that that the brief test marketing exercise here was not enough.
30. Mr. Bloch challenged Mr. Young's suggestion of a dichotomy, when considering bona fide use, of a subjective test of honesty and an objective test of what is generally done in the market. He said that it would, in practice, make substantiality of use an essential ingredient of "bona fide use", which was not what the Court of Appeal had said in Electrolux nor a consequence of Jacob J's summary of the effect of the authorities in La Mer. In short, he supported the formulation of the Vice-Chancellor that "bona fide use" meant honest use, not a use judged by some objective standard to be real commercial use on a substantial scale. However, he submitted that, on the facts of the case before the Hearing Officer and on his view of them, the use was bona fide either on a correct interpretation of Electrolux or on Mr. Young's interpretation. The undisputed evidence showed that there had been substantial use up to about 1979, that there were contractual reasons for its withdrawal, that Products had tried without much success to overcome them and that it undertook a genuine test marketing exercise of Gerber "First Foods" products using the long established Gerber mark, coupled with an application for a further registration. It was, therefore, he submitted, common ground that Products was honest in its use of the Gerber mark and that, judged by ordinary commercial standards, the test marketing exercise was genuine. He added that it is wrong to regard substantiality as having a role of its own so as to introduce an objective element into the test, as the Hearing Officer seems to have done and that, to the extent that any of the reported dicta since Electrolux suggest it, they are wrong.

Conclusion

31. There are, it seems to me, two fallacies in Mr. Young's argument that the term "bona fide use" in this context has two parts, the first, a subjective one of honesty and the second an objective one of genuineness. First, I share the difficulty of the Vice-Chancellor in grappling with the notion that a use of a mark may be honest and yet not be a bona fide use for the purpose of section 26(1)(b). Second, the argument is a further instance in this context of wrongly elevating into a general proposition of law observations made by judges in their application of the law to the facts of the cases before them. As the Vice-Chancellor said in paragraph 8 of his judgment:

. "… The question is whether or not "there was bona fide use" of the marks in the relevant period. These are, including the anglicised latin phrase, ordinary English words to be applied to the facts of the case. Whilst decided cases may cast light on their meaning they cannot provide a substitute for them."

32. It does not follow as a matter of logic or law from Jacob J's reference in paragraph 26 of his judgment La Mer to cases where the courts have found bona fide use where there is no hidden motive and to "[a] little use coupled with a genuine intention to establish a market in goods under the mark would suffice", that honesty in this respect is something separate from genuineness of intention. Nor does it follow from the fact that in Electrolux the use was not on the evidence "spasmodic or temporary" that use, to be bona fide, must always be continuous or of long duration or otherwise substantial. The Court of Appeal in Electrolux, Whitford J in Bon Matin and Jacob J. in La Mer, to the extent that they talked about such considerations of substantiality, of ordinary commercial standards or of establishing a market were simply acknowledging their possible relevance, depending on the circumstances, to the central issue whether the use in question was honest.
33. In my view, the key to the test of bona fide use under the 1938 Act, and possibly to that of "genuine use" under the new law, is whether, as Sir Raymond Evershed MR put it in Electrolux, at 36, it can be described as "a pretended use". Whether something is a pretence necessarily requires an examination of intention or motive. It is not something to be judged by "ordinary commercial standards", but on the individual facts of the case. Use may be inept and/or doomed to fail by ordinary market standards, yet still be bona fide. Depending on the circumstances, ordinary market standards, like substantiality, may have a role in determining whether a use is in fact bona fide, but neither has a life of its own as a touchstone of what amounts to bona fide use. In summary, therefore, I consider that there were two ingredients of "bona fide use" in section 26(1)(b): 1) some use in the course of trade of a mark referable to the class in respect of which it is registered; and 2) an honest intention to make that use – that is, a use that was not a pretence. The authorities do not support, and nor would I even if it were open to me, any additional or separate test of "objective genuineness", whether by reference to ordinary commercial standards or substantiality of use by reference to such standards or otherwise. However, such considerations, depending on the circumstances of the case, were capable of being relevant to the issue whether the use in question was in fact bona fide in the sense of being honest.
34. For those reasons, I should add it was not a necessary ingredient of bona fide use in every case that there should have been a firm intention to establish goods under the mark or that the attempt should have been commercially competent or likely to succeed. Those might have been relevant considerations in some cases bearing on the primary decision whether in fact the use was bona fide or a pretended use. So there might have been bona fide uses falling short of an attempt to establish or develop a market as, for example, here, where Products had a more modest intention of simply testing the market before committing itself to a firm marketing exercise. If such an exercise was in itself genuine, the fact that it was not evaluated or otherwise followed up by developing the market would not of itself have removed that quality.
35. As I have indicated, the Hearing Officer expressly found, in paragraph 29 of his decision that the Haywards Heath exercise was consistent "with what one might expect from a market testing process … to gauge store and customer reaction and preferences". I do not understand, therefore, the basis of his rejection of the use as bona fide even on his own test of "objective genuineness". For that and for the reasons I have given as to the correct meaning of the term, I would dismiss the appeal and uphold the ruling of the Vice-Chancellor on the Haywards Heath issue. In the circumstances, it is unnecessary to consider the issues raised by the parties on the second issue as to the US Bases Use.

Lord Justice Brooke:

36. I agree.

Lord Justice Carnwath:

37. I agree. I have some sympathy for the hearing officer, since he was attempting conscientiously to apply the tests laid down in the authorities. In particular he relied on a passage in the judgment of Whitford J in Bon Matin Trademark [1989] RPC 537, 543:

"…To my mind what plainly emerges from the authorities is this … the substantiality of the use is undoubtedly a relevant factor to be considered and at the end of the day one has got to consider every relevant factor. It must always be remembered that what one is directed to by section 26 of the Act is the question as to whether there has been bona fide use although the extent of the use is one factor which may be of significance, some of those factors may lead to the conclusion that although the use could not in the commercial sense be described as anything other than slight, nonetheless it may be appropriate to reach a conclusion, in the light of the circumstances as a whole, the use ought to be regarded as bona fide."

Although the hearing officer did not say so in terms, I think he may have been misled by the first sentence, so as to treat "substantially" as a distinct factor, even in relation to a use which was in other respects "bona fide".

38. However, like all the other cases to which we were referred, this passage must be read in the context of the facts of the case. The use of the word "substantial" appears to be derived from the Electrolux case. However, the passage in which Sir Raymond Evershed MR used it (p36) followed his reference to the submission (appropriate on the facts of that case) that the use could not be bona fide, because the real motive was "no more that to gain a particular forensic advantage". The Master of the Rolls held that, notwithstanding such a motive, the substantiality of the use showed that it could not be regarded as "a pretended use".
39. I agree with Mr Bloch that his use of words such as "spasmodic", "temporary", "ordinary and genuine", was not intended to pose any distinct test (although it has sometimes been treated in that way – see e.g. the Nerit case per Lawton LJ at [1982] FSR at p 79), but simply to explain his reasons for holding that it was not "a pretended use" on the facts of that case. This was in line with Morris LJ's view (also in the Electrolux case, p 42) of the purpose of the legislature, to deny immunity from attack where there was "really only some fictitious or colourable use and not a real or genuine use."
40. The position in my view was accurately summarised by Jacob J in a passage from La Mer Technology Inc –v- Laboratoires Goemar SA (19^th December 2001, unreported). As he said, under the 1938 Act, "there was no rule of de minimis", but "if a use was only slight, that might, depending on other circumstances, show that the trader was not genuine in his activities …." The present was not such a case. The use was genuine, and the fact that it was limited in scale does not make it other than a "bona fide use" within the meaning of section 26(1)(b).
41. I would dismiss the appeal.