Sofaworks

Sofaworks

The recent IPEC decision in Sofaworks has caused confusion around the question of genuine use of a mark in the EU and the threshold for retaining a CTM registration which is vulnerable to non-use revocation. By way of background, Sofa Workshop brought a trade mark infringement action against Sofaworks. In defence, Sofaworks claimed that, inter alia, the earlier CTM registrations relied on by Sofa Workshops were liable to revocation for non-use. The evidence of use filed by Sofa Workshop was heavily focused on the UK with HHJ Hacon acknowledging that the mark had been put to substantial use in the UK. Aside from this, evidence of use throughout the rest of the EU was light with proof of just one non-UK sale. Following OHIM practice after the Leno Merken decision, it was widely thought that use in one Member State could be sufficient to maintain a registration. However, following an analysis of Leno Merken¸HHJ Hacon explicitly stated that use in one Member State is not sufficient to maintain a CTM registration because the mark had not been used in a way that created or maintained an EU market share. As a result, Sofa Workshop’s CTM registrations were revoked (despite this, Sofa Workshop succeeded in the passing-off action). This decision raised a number of interesting questions and it is not yet clear whether the decision will be appealed. However, in light of this decision, CTM owners should seriously think about expanding use of a mark beyond one Member State, where possible, and, where not, filing national applications to provide fall-back protection for their trade mark