Not so-far, Sofa Workshop (Brands & IP newsnotes - issue 3)
27 September 2015
If a trade mark proprietor does not make ‘genuine use’ of its marks, they may be vulnerable to attack from third parties.
Until recently, many trade mark practitioners would have thought that ‘genuine use’ did not require use of a mark in multiple member states in Europe (territorial borders should generally be disregarded but, from a practical perspective, genuine use in just one territory would suffice). But some may be falling off their chairs (or errrr… sofas) at the recent decision of Judge Hacon in the High Court.
The Court has revoked Sofa Workshop’s trade marks for the words SOFA WORKSHOP because ‘genuine use’ had not been made of them in the European Community. Whilst the mark had been used extensively in the UK; it hadn’t been used elsewhere. In fact, there was no evidence of the sofas being promoted to consumers outside the UK and only a single sale took place elsewhere in Europe. And that, the judge found, was problematic. From where he was sitting, that didn’t amount to ‘genuine use’ and the marks were invalidly registered and should be revoked.
The outlook was bleak, but all was not lost. The extensive use of the SOFA WORKSHOP mark in the UK meant that Sofa Workshop had built up significant goodwill and was able to succeed in a claim for ‘passing off’. The use by another sofa manufacturer of the name and sign SOFAWORKS was likely to misrepresent to consumers a relationship with Sofa Workshop.
The decision on ‘genuine use’ will have surprised many and whilst an appeal may follow, perhaps Sofa Workshop feels that it is the one sitting pretty in the end. It has lost two Community trade marks but won on passing off. And, the indications are that Sofa Works might not want a further fight. Choosing instead to sit back, accept the decision and take the commercial path to rebrand.
This article was first published in the Brands & IP newsnotes publication - issue 1.
EU trade mark reforms come closer (Brands & IP newsnotes - issue 1)27 September 2015
Seven years after the European Commission started its evaluation of the European trade marks framework, the texts of the new proposed legislation were finally published in June 2015.
It never rains, but it pours…(Brands & IP Newsnotes - issue 1)27 September 2015
Registered designs are used to protect the appearance of products. In considering whether to allow registration, several factors come into play: what else is already out there (the ‘prior art’); who will use it (the ‘informed user’); and what ‘degree of freedom’ does the designer have in arriving at the particular design?
You’re cabbing a laugh (Brands & IP Newsnotes - issue 1)27 September 2015
The High Court has refused an application by the manufacturer of the iconic London black cab (“LTC”) for permission to adduce survey evidence in a claim for passing off.
What’s New Copycat? (Brands & IP newsnotes - issue 1)27 September 2015
Last year, consumer group Which? carried out a comprehensive survey of the copycat product packaging market in the UK. It found that over 150 of retailers’ own-label products “mimicked” the market-leading brand-owner’s packaging.
A copyright work in 140 characters? (Brands & IP Newsnotes - issue 1)27 September 2015
It isn’t easy to keep your social media followers entertained with rafts of enthralling and hilarious new material.
When “logos” turn into “no-goes” (Brands & IP Newsnotes - issue 1)27 September 2015
As we move even deeper into an age of digital advertising and social media, it is becoming increasingly important for businesses to have a short hand for their brand; something which denotes the business, stands out as a guarantee of origin and makes the brand instantly recognisable. We’re talking about logos.
Access to justice: IPEC 1 - MoJ 0 (Brands & IP Newsnotes - issue 1)27 September 2015
Conducting litigation in a cost effective and proportionate manner can be a challenge, especially if it involves big brand owners going toe to toe. But help is at hand in the form of the Intellectual Property Enterprise Court (‘IPEC’).