In a decision which appears inconsistent with the decision of the Court of Justice of the European Union (CJEU) in Leno Merken1, the Intellectual Property and Enterprise Court (IPEC) has found that use of a CTM in only one member state of the EU is insufficient to constitute genuine use. Evidence that a CTM has been "used to create or maintain a share in the market for the relevant goods or services across a section of the EU extending beyond one Member State" is required or such CTM may be invalidly registered and liable to revocation on the grounds of non-use.
In the case in question, The Sofa Workshop Ltd v Sofaworks Ltd ( EWHC 1773 (IPEC), 29 June 2015), the court considered that while Sofa Workshop had put their CTMs to use within the UK, there was no evidence the CTMs had been used more widely within the EU. Despite Sofa Workshop submitting evidence of an advertising magazine distributed throughout Europe, the court held the format of the telephone numbers printed and the invitation to "pop in" in the advert suggested the content was exclusively targeted at UK-based readers. As the CTMs had not been used by Sofa Workshop to maintain or create market share within the EU for the goods or services covered by the CTMs, they were revoked.
While ultimately Sofa Workshop did succeed against Sofaworks in a claim for passing off, it seems that arguably the court may have placed more weight on the geographical scope of the use of CTMs than the CJEU has done in previous decisions. The IPEC decision appears to run counter to guidance of the CJEU that "the territorial scope of the use is not a separate condition for genuine use but one of the factors determining genuine use"2 and that use in one member state may be sufficient to amount to use in a substantial part of the territory of the Community3. However, given that Sofa Workshop largely succeeded in its claim (as their claim for passing off was upheld), we are unlikely to see an appeal here. Businesses should therefore be aware that though the CJEU has upheld protection of CTMs where they are used in a limited geographical area, the inconsistent IPEC decision in this arena is likely to remain unchallenged at this stage and there is therefore a risk that a CTM may be revoked for non-use where it is used in only one member state. This risk is something businesses should take into consideration when managing their trade mark portfolios, particularly where there is likely to be restricted geographical use of the trade mark concerned. You can find a transcript of the case by clicking here.