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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.

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