Decision Nº O/003/22 from Intellectual Property Office - (Trade market), 4 January 2022
| Judge | Mrs T Perks |
| Administrative Decision Number | O/003/22 |
| Date | 04 January 2022 |
| Court | Intellectual Property Office (United Kingdom) |
| Registration Number | UK00003095887, UK00003373500 |
O/003/22
TRADE MARKS ACT 1994
CONSOLIDATED PROCEEDINGS
IN THE MATTER OF APPLICATION NO. 3373500
BY SOFA SOURCE LTD.
IN CLASS 20
AND IN THE MATTER OF OPPOSITION THERETO
UNDER NO. 416521
BY SOFA SOURCE DIRECT LIMITED
AND IN THE MATTER OF TRADE MARK REGISTRATION NO. 3095887
IN THE NAME OF SOFA SOURCE DIRECT LIMITED
IN CLASS 20
AND AN APPLICATION FOR A DECLARATION OF INVALIDITY THERETO
UNDER NO. 503035
BY SOFA SOURCE LTD
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BACKGROUND AND PLEADINGS
1. There are two actions in these consolidated proceedings. An opposition by Sofa
Source Direct Limited (“Party A”) directed against a trade mark application in the name
of Sofa Source Ltd. (“Party B”). Party B seeks to invalidate the trade mark registration
relied upon by Party A in the opposition.
Opposition no. 416521 against trade mark application no. 3373500
2. On 7 February 2019, Party B applied to register the following trade mark in the UK:
UK application no. 3373500
Filing date: 07 February 2019
Priority date: 04 October 2018
Priority country: EUIPO
TM from which priority claimed: 017914935
3. The application was published on 19 April 2019 for the goods shown below:
Class 20: Furniture.
4. On 7 June 2019, Party A opposed the application under Sections 5(2)(b) and 5(3)
of the Trade Marks Act 1994 (“the Act”). The opposition under each of these grounds
is based upon the trade mark shown below:
UK registration no. 3095887
Sofa Source
Filing date: 24 February 2015; Registration date: 22 May 2015
The mark is registered for:
Page 3 of 57
Class 20: Furniture for camping; Furniture for displaying goods; Furniture made
from steel tubing; Seating furniture; Fitted fabric furniture covers; Furniture
chests; Furniture frames; Furniture moldings; Furniture of plastic materials;
Furniture partitions; Garden furniture; Glass furniture; Living room furniture;
Mirrors [furniture];Outdoor furniture; Recliners [furniture]; Seats [furniture]; Toy
boxes [furniture]; Furniture adapted for use by those with mobility difficulties;
Furniture doors; Furniture screens; Furniture doors made of glass; Furniture for
the physically handicapped, those of reduced mobility and invalids; Furniture
cabinets; Furniture for offices; Furniture, mirrors, picture frames; Furniture for
house, office and garden.
5. By virtue of its earlier filing date, Party A’s mark is an earlier mark in accordance
with Section 6 of the Act. In its counterstatement, Party B requested Party A to provide
proof of use, however, as Party A’s mark had not been registered for five years or
more at the filing date (or priority date) of the contested application, it is not subject to
the proof of use requirements specified within Section 6A of the Act.
6. Party A’s claims under Sections 5(2)(b) and 5(3)1 are summarised in Q5 and Q3 in
this way:
Q5. Use this space to supply any further information about why you consider
that there is a likelihood of confusion and e.g. why you consider the respective
marks or goods and/or services to be similar.
Party A’s response: “Primarily in the design, manufacture and supply of all types
of seating furniture, including sofa’s settees, chairs, recliners not limited to
those made from fabric and/or leather”.
Q3. It is claimed that the similarity between the repute earlier trade mark and
the later trade mark is such that the relevant public will believe that they are
used by the same undertaking or think that there is an economic connection
between the users of the marks?
1 The Section 5(3) ground was withdrawn at the hearing
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