The question of what constitutes genuine use of a CTM has caused much controversy in EU trade mark circles over the past 20 years. Some thought that the European Court’s decision in the Leno Merken v Hagelkruis Beheer (C-149/11; Onel/Omel) case might settle the matter. As so often however, the Delphic musings of that Court simply muddied already murky waters. In a recent case (The Sofa Workshop Limited v Sofaworks Limited; 2015 EWHC 1773) before the Intellectual Property Enterprise Court, the Judge (His Honour Judge Hacon) attempted to clear the murk.
Whilst there were many aspects to this case, not least why OHIM had granted two CTMs for the phrase Sofa Workshop in relation to furniture and related goods and services in Classes 18, 20, 24 and 35, we shall concentrate on the issue of genuine use here.
The Sofa Workshop owned two CTMs for the trade mark Sofa Workshop, one covering goods in Classes 20 and 24, the other protecting goods and services in Classes 18, 20, 24 and 35. They sued the defendant in relation to their use of the trade mark Sofaworks for identical and similar goods and services based on both their registered and unregistered trade mark rights in Sofa Workshop. In response to this trade mark infringement action, the defendant counterclaimed for the revocation of both CTMs on the basis of five years non-use (Article 51 CTMR).
The Sofa Workshop put forward evidence of use of their trade mark during the relevant period which showed:
i) Widespread use of their house mark in the UK in relation to furniture and similar that was sold both online and through its retail stores;
ii) Adverts for The Sofa Workshop in the magazine World of Interiors which was circulated in the EU in countries other than the UK; and
iii) One order from a hotel in Copenhagen for a footstool, a chair, two sofas and a bench. There was no evidence however that the individual responsible for this purchase had done so in response to any marketing received in (or targeted at) Denmark.
So, to all intents and purposes, The Sofa Workshop could only rely on extensive use of its mark in the UK, but nowhere else in the EU, to sustain its two CTM registrations. There was no convincing evidence that it promoted (and sold) its products outside the UK. This use was not enough to convince the Judge to maintain the two CTMs. In his view, the extent of The Sofa Workshop’s use of its house mark was not enough to “maintain or create market share within the Community for the goods and services covered by the marks”. He therefore ruled that both CTMs should be revoked pursuant to Article 51 CTMR.
If this radical view on the genuine use of a CTM were followed throughout the EU, including at OHIM and by the European Court, it could revolutionise, and severely limit, the enforcement of CTM registrations by many owners. The chances of OHIM following His Honour Judge Hacon’s ruling however are minimal to non-existent. For the time being though, the owners of CTMs that are outside their non-use grace periods should be certain that they have genuine use of their mark(s) in at least two EU countries, one of which is preferably the UK, if they wish to enforce their (CTM) rights before the UK Trade Mark Office (and possibly before the English Courts) successfully.