The Sofa Workshop Ltd v Sofaworks Ltd

The Sofa Workshop Ltd v Sofaworks Ltd

The CTMs were invalidly registered as they were descriptive and lacked distinctiveness in the relevant part of the Community, and had not acquired distinctiveness outside the UK. The CTMs were also liable to be revoked for non-use outside the UK. However, the claimant succeeded in passing off as it had established goodwill in the UK, misrepresentation by the defendant, and likelihood of damage.

Parties
Claimant: The Sofa Workshop Limited; Defendant: Sofaworks Limited
Jurisdiction
England and Wales
Judgment Date
29 June 2015
Procedural Posture
Intellectual Property (trade Mark) / Judgment After Full Trial
Outcome
Claim for passing off succeeds; CTMs declared invalid and revoked for non-use; infringement claim would have succeeded if CTMs were valid.
Legal Topics
Trade Mark Infringement, Passing Off, Revocation for Non Use, Invalidity of Trade Mark, Acquired Distinctiveness
Intellectual Property Commercial Law Trade Mark Infringement Passing Off Revocation for Non Use Invalidity of Trade Mark Acquired Distinctiveness

Case Brief

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Parties

The Sofa Workshop Limited

Claimant

Sofaworks Limited

Defendant

Procedural Posture

Intellectual Property (trade Mark) / Judgment After Full 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 under Article 7(1)(b) and/or 7(1)(c) of the CTM Regulation for being descriptive or lacking distinctiveness
  3. 3 Whether the CTMs have acquired distinctiveness through use

Ratio Decidendi

The CTMs were invalidly registered as they were descriptive and lacked distinctiveness in the relevant part of the Community, and had not acquired distinctiveness outside the UK. The CTMs were also liable to be revoked for non-use outside the UK. However, the claimant succeeded in passing off as it had established goodwill in the UK, misrepresentation by the defendant, and likelihood of damage.

Court Disposition

Claim for passing off succeeds; CTMs declared invalid and revoked for non-use; infringement claim would have succeeded if CTMs were valid.