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In the recent case of Sofa Workshop v Sofaworks Ltd [2015] EWHC 1773 (IPEC), a UK Court issued a significant decision regarding what constitutes genuine use of a Community Trade Mark Registration. The case in question involved Sofa Workshop and Sofaworks.

Sofa Workshop, trading under that name, were the proprietors of two Community Trade Mark Registrations for the Mark SOFA WORKSHOP covering a range of goods and services in Classes 18, 20, 24 and 35. Sofa Workshop alleged that the similarity in their respective trading names is such that Sofaworks infringed Sofa Workshop’s two Community Trade Marks and passed itself off as being associated with Sofa Workshop. Sofa Workshop alleged the similarity between the Marks SOFA WORKSHOP and SOFAWORKS, as well as the similarity between the goods and services in question, resulted in an inevitable likelihood of confusion.

On the other hand, Sofaworks counter-claimed that the Community Registrations for SOFA WORKSHOP were invalidly registered as the Mark is descriptive of the goods and services in question and is devoid of distinctive character. In addition, even if the Marks were not considered descriptive and devoid of distinctive character, the Registrations, according to Sofaworks, were vulnerable to cancellation on the grounds of non-use as they had not been put to genuine use in the European Union during the past five years.

In response to the claim that the Mark was invalidly registered, Judge Hacon agreed with Sofaworks and held that the Mark SOFA WORKSHOP was descriptive and devoid of distinctive character. The Mark SOFA WORKSHOP was considered to consist exclusively of signs which may serve in the course of trade to designate a characteristic of some or all of the goods and services for which the Mark was registered. Consequently, the Mark was invalidly registered.

Regarding the claim of non-use, Judge Hacon held that even if the Registrations were valid, they were subject to revocation for non-use and the onus was on Sofa Workshop to demonstrate use of the Marks throughout the European Union. Extensive evidence of use was filed by Sofa Workshop dating back to 1986, however, the evidence of use related solely to the UK (save one instance of a non-UK sale). The evidence of use filed clearly demonstrated that the Mark had acquired a level of distinctiveness in the UK in relation to sofas and related products prior to the invalidity action being filed.

However, notwithstanding the extensive evidence of use of the Mark in the UK, no evidence of use of the Mark in the other English speaking countries of the European Union was filed. The importance of this being that in the absence of acquired distinctiveness in the English speaking countries, the Mark SOFA WORKSHOP would still be considered descriptive and non-distinctive and therefore invalidly registered.

In assessing whether acquired distinctiveness in one Member State is sufficient to maintain a Community Trade Mark Registration, Judge Hacon stated;

“[T]here is a distinction between national marks and Community marks when it comes to assessing genuine use. For national marks the geographical extent of use is a factor to be taken into account, but it is apparently of no great weight… In respect of Community marks the geographical extent of use is, in the general run, crucial: it must extend at least beyond the boundaries of one Member State. By way of a non-exhaustive exception to the general rule, this does not apply where the market for the goods or services is confined to one Member State.”

Applying this reasoning to the case at hand, and bearing in mind that the market for furniture is not limited to the UK, evidence of use of the Mark and a level of acquired distinctiveness outside of the UK and in other Member States was crucial if Sofa Workshop were to maintain their Registrations. In the absence of either, the CTMs were revoked on the grounds of non-use.

Consequently, Sofa Workshop’s Trade Mark infringement action against Sofaworks was unsuccessful; however, their claim of passing off ultimately prevailed. The evidence of use of the Mark SOFA WORKSHOP in the UK demonstrated not only an acquired distinctiveness in the UK but also a level of goodwill in the business. As such, the use of the Mark SOFAWORKS in the UK was a misrepresentation to the consumers that there was a commercial link between the two parties. This misrepresentation was considered sufficient to cause material damage to Sofa Workshop and as a result the claim for passing off was successful.

This decision, in particular the UK court’s interpretation of what constitutes genuine use of a Community Trade Mark is significant. If followed, it means that use of a Community Trade Mark in one country alone is not sufficient to defeat a revocation action on the grounds of non-use and maintain the Registration(s) where the market for the goods or services in question in European-wide.