• High Court rules that two Community trade marks (CTMs) – relating to SOFA WORKSHOP – were invalidly registered
  • A CTM generally requires evidence that it has been used to create or maintain a share in the market at least beyond the boundaries of one member state
  • Evidence of use in advertorial content in UK magazines with a pan-European distribution is not sufficient to show intention to trade outside the UK

What's it about?

Sofa Workshop is a UK-based retailer of sofas. It owned two word CTMs in respect of SOFA WORKSHOP, covering various categories relating to furniture, textiles and homeware.

Sofa Workshop had an established customer base in the UK. However, evidence of use of the CTMs outside the UK was limited to advertorial content in UK magazines with a pan-European distribution.

Rival sofa retailer CSL adopted the trading name "Sofaworks" in December 2013. The present action concerns a claim brought by Sofa Workshop that the use of Sofaworks by CSL had infringed its CTMs.

Why does it matter?

Maintenance of a CTM requires evidence of use to create or maintain a share in the market beyond the boundaries of one member state. The court found that use by Sofa Workshop of the CTMs outside the UK in advertorial content in magazines with a pan-European distribution did not evidence an intention to trade outside the UK. Sofa Workshop could only point to one sale outside the UK which took place in February 2013, but even in this case there was no evidence that the sale resulted from marketing received by the purchaser outside the UK.

The Court held therefore that there had therefore been no infringement of the CTMs, as they had been invalidly registered and were liable to be revoked for non-use during a five year period following registration.

However, Sofa Workshop did succeed in its claim for passing off.

Now what?

This decision is a good reminder that brand owners should adopt a brand protection strategy that mirrors their overall commercial strategy. If a mark is registered as a CTM, rather than a national trade mark, then it is important that the business trades in more than one member state or has a clear intention to do so, which is more than merely aspirational.

Where there is such doubt, the owner may risk losing trade mark protection altogether. However, conversion of a CTM into one or more national marks may still remain a possibility (although no such application was made in this case).

The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC), 29 June 2015