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Sofa squabble ruling given by the Intellectual Property Enterprise Court

Written by Ellis Sweetenham on 02 July 2015

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Facts:

Both parties in this case were retailers of furniture, specifically sofas.

The claimant, Sofa Workshop, stated that the defendants mark, Sofaworks,  had such high similarity that it had infringed their two community trade marks (CTM’s) and had passed itself off as being associated with Sofa Workshop

Sofaworks denies these claims.

They also counterclaim that both of the CTM’s have not been used and therefore should be revoked. In addition, Sofaworks believes that the two marks are invalid as they lacked distinctiveness and were descriptive.

In response, Sofa Workshop admitted non-use of the marks in relation to some classifications of good for which the trade marks were registered for. Therefore they agreed there should be a partial revocation of both CTMs.

Issues:

The key issue was in relation to the revocation of the marks for non-use.

There was no dispute that Sofa Workshop had put its CTMs to genuine use in the UK in the relevant five year period.

It was necessary to consider the evidence of use outside the UK in the five-year period.

Judgment:

The assessment of genuine use in the European Community was to be approached in the same way as the assessment of genuine use in a Member State.

The question of whether there had been genuine use in the Community was not to be approached from the perspective of whether there had been use of the mark in any particular number of Member States. Territorial borders were to be disregarded. However as a general rule, genuine use in the Community would require use in more than one Member State.

In addition, whether the mark had been used would depend on all relevant facts and circumstances, including the characteristics of the market concerned, the nature of the relevant goods and services, the territorial extent and scale of use, and the frequency and regularity of use.

On the evidence, the CTMs had not been used in the five-year period up to the date of the counterclaim to maintain or create market share within the Community for the goods or services for which the marks are registered. Therefore the CTMs would be revoked.

In addition, on the evidence, Sofa Workshop succeeded in its claim for passing off 

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