In Sofa Workshop Ltd v Sofaworks Ltd the claimant’s two SOFA WORKSHOP CTMs had only been used within the UK in the relevant five year period, and so based on Judge Hacon’s finding that maintenance of a CTM requires evidence that it has been used to create or maintain a market share in more than one member state, these CTMs were revoked for non-use. The court concluded that the effect of ONEL/OMEL (Case C-149/11 in the CJEU) was to create a distinction between national marks and CTMs with respect to assessing genuine use. Contrary to the approach taken for national marks, where geographical extent of use is a minor factor to be taken into account (per Sunrider v OHIM), he concluded that the rule for CTMs is that the geographical extent of use must extend at least beyond the boundaries of one member state.
This is an interesting interpretation of ONEL, and seemingly at odds with the decision of the CJEU, which found that whilst it might be reasonable to expect that a CTM ought to be used in a larger area than a national mark, it is not necessary for it to be used in an extensive geographic area for the use to be genuine. The CJEU stated that, when assessing genuine use, all facts and circumstances should be considered, but territorial borders should be disregarded. The CJEU in ONEL also explicitly declined to set out a de minimis rule as to how large a territory will satisfy the use requirement.
Sofa Workshop has not indicated whether it intends to appeal, and only time will tell whether this decision will be upheld and if its analysis will be applied again. In the meantime, the ramifications to applicants and proprietors of CTMs that will be or are currently used in only one member state could potentially be serious. Under Judge Hacon’s reasoning, an applicant for a CTM must be taken to intend to use it in more than one member state and has five years in which to do so, otherwise there is a risk that the mark will be revoked, and the sign in question becomes free for use by others elsewhere in the Community.