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EU case law has long established that
use of a CTM in one Member State of
the EU can constitute genuine use.
However, a recent decision of Judge
Hacon, sitting in the UK Intellectual
Property Enterprise Court in The Sofa
Workshop Ltd (“Sofa Workshop”) v
Sofaworks Ltd (“Sofaworks”), casts
some doubt over this widely accepted
principle of EU trade mark law.
Sofa Workshop was the owner of two
CTMs for the words SOFA WORKSHOP
covering goods and services related to
furniture and accessories. Sofaworks
also offers goods and services
connected with furniture. For that
reason, Sofa Workshop claimed that the
use of the name Sofaworks infringed
both of its SOFA WORKSHOP CTMs, and
also amounted to passing off.
In response, Sofaworks claimed that
both Sofa Workshop’s CTMs were
invalid and could be revoked, as they
had not been put to genuine use in
the EU.
It was decided that there had been
no genuine use of the CTMs in the
EU. This was despite Sofa Workshop
submitting extensive evidence of use
of SOFA WORKSHOP in the UK since
1986. Judge Hacon was critical of the
lack of evidence showing advertising
and promotional material being
directed at consumers in other EU
member states. There had only been
one non-UK sale under the SOFA
WORKSHOP brand in the five year
period. For these reasons, Judge
Hacon decided that the CTMs had not
been put to genuine use in the EU
during the relevant five-year period.
This is of significance to CTM owners,
since it has previously been widely
held that use of a CTM in one EU
member state would be sufficient to
defeat an attack based on non-use.
Judge Hacon’s decision means that
even extensive use of a mark in the
UK alone would not be sufficient to
defend a non-use cancellation action.
In addition to the findings of non-
use, the SOFA WORKSHOP CTMs
were deemed to be invalid, the Judge
holding these marks were descriptive
and non-distinctive of the goods for
which the trade marks were registered.
It was also decided that the marks had
not acquired distinctiveness through
their use in the UK.
Despite its inability to claim trade mark
infringement on the basis of its CTMs,
Sofa Workshop was able to show that
it had acquired goodwill in its SOFA
WORKSHOP name, and this allowed
it to rely on its unregistered rights by
way of the law of passing off to prevent
the use of the name Sofaworks. So
although Sofa Workshop suffered
the heavy blow of having its CTMs
cancelled, it was still able to prevent
the use of the rival Sofaworks brand,
thanks to its successful action for
passing off.
This case gives rise to immediately
important issues concerning genuine
use of trade marks in the EU. We will
need to wait and see whether Judge
Hacon’s decision is followed in future
cases to understand the full effects it
will have in shaping the future of the
meaning of genuine use in the EU.
Genuine use in the
European Community:
Where do the
boundaries lie?
A European Community trade
mark registration (“CTM”) can
be cancelled if it has not been
put to “genuine use” in the
EU during the first five years
of its registration or for an
uninterrupted period of five
years thereafter.
To find out more
contact Mark Caddle
