Community trademark owners…do not sleep on a SOFA!!

There is a peculiar attention for a recent decision issued by a UK Court, regarding what constitutes genuine use of a Community Trademark registration.

It is the case of Sofa Workshop v Sofaworks Ltd [2015] EWHC 1773 (IPEC), where Sofa Workshop, owner of two CTM registrations for SOFA WORKSHOP (classes 18, 20, 24 and 35) alleged the similarity (and infringement) between its marks SOFA WORKSHOP and the other side’s mark SOFAWORKS, and on the other hand, Sofaworks counter-claimed that the CTM registrations for SOFA WORKSHOP were (besides invalidly registered since descriptive) 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.

Focusing on the genuine use of the CTMs, in a nutshell, Judge Hacon held that a) the onus was on Sofa Workshop to demonstrate use of the CTMs throughout the European Union;  2) it has been produced extensive evidence of the use of the marks in the UK but no evidence of use of the CTMs in the other English speaking countries of the European Union was given. And it was, especially in the case at issue, being  the marks in principle descriptive and non-distinctive (and therefore invalidly registered),  important to prove use/acquired distinctiveness in, especially, the English speaking countries of the EU. Consequently, in the absence of evidence of use of the mark in other countries, and as a consequence evidence of distinctiveness outside the UK, the CTMs were revoked on the grounds of non-use.

According to the many articles of UK attorneys related to the SOFA WORKSHOP decision,  it is clear that this case, which focuses on the UK court’s interpretation of what can be established to be genuine use o a trademark, is of great importance.  Of course, this is a national decision  but you all remember  the recent Court of Justice decision focusing on genuine use (Leno Merken BV v Hagelkruis Beheer BV (C-149/11) [2013] E.T.M.R. 16).

It may follow (but wasn’t that clear enough?!) that the use of a Community Trade Mark in one country alone may not be sufficient to defeat a revocation action on the grounds of non-use and maintain the CTM registration.

 Of course, it is also a case-by-case evaluation. For example, in case T- 38/13 PEDRO/PEDRO DEL HIERRO evidence submitted in connection with Spain (and some other  marginal countries) was considered sufficient; in case T-398 TVR evidence submitted for the use in the UK only was considered sufficient; in case T-278/13 NOW, the use of the mark in the Thames Valley (UK) was considered sufficient as well.

Under the circumstances, we may not but conclude that it is extremely important for Community trademark registration owners to actively and extensively use their mark in the EU and if, as it may happen, the use of the mark is in a limited territory of the EU, it is better to verify the validity of the mark and its enforceability with a specialized Trademark Attorney.