The extent of use which a trade mark owner must show in order to fend off an application for revocation of non-use has exercised both the UK courts (Gerber Trade Mark [2003] RPC 1; and Laboratoire De La Mer Trade Mark [2006] FSR 5) and the European Court of Justice (Ansul BV v Ajax Brand Brandbeveiligung [2003] RPC 40; Laboratoire De La Mer Trade Mark [2002] ETMR 34).

In Sambbasivam v Chetty the High Court was called on to decide whether evidence as to two sales of saris within the relevant three year period was sufficient to prevent removal of two registrations for the mark NALLI’S in class 24 for textiles and class 25 for goods including saris, headgear and footwear.

The evidence showed the supply of the saris from the trade mark owner’s shop in Mumbai. In both cases, the goods had been delivered in New Zealand by the owner’s daughter who was studying here and whom the purchasers paid for the items. The wrapping to the saris carried the NALLI’S trade mark. Dobson J held [44] that, while there was no evidence as to how the daughter accounted for the proceeds of sale, one credible inference was that this was to supplement her financial resources in New Zealand. Notwithstanding this reservation, the Court found that these isolated sales appeared “to involve genuine use of the appellant’s mark and they do appear to have been undertaken ‘for the purposes of trading’ as that gloss has been applied to the phrase ‘in the course of trade’ in s66(1)(a) of the Act”.

Further, the Court was prepared to treat the daughter’s involvement as constituting part of activity in New Zealand “for the purpose of trade” – even if the attribution to her of that activity might create an issue as to non-compliance with the terms of her student visa. The judge found that two transactions in the space of a relevant three year period in other contexts such as a high volume manufacturing business might be so insignificant as to not justify a finding that the use was genuine. However, business on a very modest scale as an adjunct to a principal business in Mumbai with branches in other countries “may qualify as genuine without the same minimum level of activity that would be required in other contexts to establish its genuine character”.

The Court therefore found there was sufficient evidence to avoid a finding of revocation for both marks. The case seems to fit within orthodox principles that there is no de minimis test, merely the need to show genuine use of the mark on the market. However given that the only use shown was on saris, there was surely a case for partial revocation of the class 25 registration which also covered headgear and footwear.