The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC) (29 June 2015)

The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC) (29 June 2015)

The claimant's CTMs had not been put to genuine use in the Community outside the UK and did not meet the threshold for Community-wide use; the marks were descriptive for sofas and related goods and had not acquired distinctiveness across the EU; therefore, the CTMs should be revoked for non-use and declared invalid for descriptiveness.

Citation
[2015] EWHC 1773 (IPEC)
Parties
Claimant: The Sofa Workshop Limited; Defendant: Sofaworks Limited
Jurisdiction
England and Wales
Judgment Date
29 June 2015
Procedural Posture
Intellectual Property (trade Mark) Infringement and Passing Off / Judgment After Trial
Outcome
CTMs revoked for non-use and declared invalid for descriptiveness; counterclaim succeeds; claim for infringement and passing off fails.
Legal Topics
Trade Mark Infringement, Passing Off, Revocation for Non Use, Invalidity for Descriptiveness, Acquired Distinctiveness
Intellectual Property Law Trade Mark Infringement Passing Off Revocation for Non Use Invalidity for Descriptiveness Acquired Distinctiveness

Case Brief

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Parties

The Sofa Workshop Limited

Claimant

Sofaworks Limited

Defendant

Procedural Posture

Intellectual Property (trade Mark) Infringement and Passing Off / Judgment After Trial

Legal Issues

  1. 1 Whether the claimant's Community Trade Marks (CTMs) should be revoked for non-use under Article 51 of the CTM Regulation
  2. 2 Whether the CTMs are invalid for being descriptive under Article 7(1)(c)
  3. 3 Whether the CTMs have acquired distinctiveness through use

Ratio Decidendi

The claimant's CTMs had not been put to genuine use in the Community outside the UK and did not meet the threshold for Community-wide use; the marks were descriptive for sofas and related goods and had not acquired distinctiveness across the EU; therefore, the CTMs should be revoked for non-use and declared invalid for descriptiveness.

Court Disposition

CTMs revoked for non-use and declared invalid for descriptiveness; counterclaim succeeds; claim for infringement and passing off fails.

Orders

  • Partial revocation of CTMs for non-use as conceded by claimant
  • CTMs revoked in toto for lack of genuine use in the Community