The Sofa Workshop Ltd v Sofaworks Ltd
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Hacon,Judge Hacon |
| Judgment Date | 29 June 2015 |
| Neutral Citation | [2015] EWHC 1773 (IPEC) |
| Docket Number | Case No: IP14M00054 |
| Court | Intellectual Property Enterprise Court |
| Date | 29 June 2015 |
[2015] EWHC 1773 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
His Honour Judge Hacon
Case No: IP14M00054
Michael Silverleaf QC and Anna Edwards-Stuart (instructed by Weil, Gotshal & Manges) for the Claimant
John Baldwin QC and Fiona Clark (instructed by DLA Piper UK LLP) for the Defendant
Hearing dates: 29–30 April 2015
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
The Claimant ("Sofa Workshop") is a retailer of sofas and other furniture. The Defendant ("Sofaworks") is in the same business. Sofa Workshop alleges that the similarity in their respective trading names is such that Sofaworks has infringed Sofa Workshop's two Community Trade Marks ("the CTMs") and has passed itself off as being associated with Sofa Workshop.
The CTMs are:
(1) CTM No. 4,229,605 ("the 605 Mark"), the word mark SOFA WORKSHOP, registered with effect from 11 February 2005 in respect of the following goods and services in the stated classes:
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips harness and saddlery.
Class 20: Furniture; pillows, bolsters, mattresses; beds, sofa beds; mirrors; picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
Class 24: Textiles; textile articles, textile piece goods; bed and table covers; household linen; linen cloth; bed linen; bath linen; table linen; table cloths; curtains of textile or plastic; pillow shams; pillow cases; sheets; towels; eiderdowns; duvets; covers for eiderdown and duvets; napery; napkins; serviettes; table mats (not of paper); face towels; flannels; tissues of textile for removing make-up; traced cloth for embroidery; tapestry (wall hangings) of textile; rugs (travelling); furniture coverings of plastic.
Class 35: Retail services of a general store specialising in household furniture (including home office furniture), appliances, apparatus, textiles and security.
(2) CTM No. 301,531 ("the 531 Mark"), also the word mark SOFA WORKSHOP, registered with effect from 1 August 1996 in respect of the following goods in the stated classes:
Class 20: Furniture; upholstered chairs and sofas.
Class 24: Textile piece goods for furnishings.
Infringement of the CTMs is alleged pursuant to art.9(1)(b) of Council Regulation (EC) 207/2009 ("the CTM Regulation"). Sofaworks denies both infringement of the CTMs and passing off. It also counterclaims for revocation of both CTMs for non-use pursuant to art.51 and for a declaration that both CTMs are invalid, having been registered contrary to both art.7(1)(b) and 7(1)(c) of the CTM Regulation.
In its Defence to Counterclaim, Sofa Workshop admits non-use in relation to some of the goods in the respective specifications and therefore concedes that there should be partial revocation of both CTMs. In relation to the allegation of invalidity because the marks are descriptive, aside from denying the allegation Sofa Workshop argues that (i) it applies only in relation to sofas, (ii) the CTMs have acquired a distinctive character in relation to sofas and (iii) if the allegation is made good and there is no acquired distinctive character, the specification of the CTMs can be appropriately narrowed to neutralise the objection.
Sofa Workshop also raised the possibility of converting the CTMs to national UK trade mark applications, pursuant to art.112 of the CTM Regulation, by way of a further fall-back position. This was posited both in the event of a finding that the CTMs should be revoked for non-use and if either is found to be invalidly registered.
Michael Silverleaf QC and Anna Edwards-Stuart appeared for Sofa Workshop. John Baldwin QC and Fiona Clark appeared for Sofaworks.
The Issues
The issues have evolved since the CMC and are now these:
Trade Marks
(1) The extent to which each of the CTMs should be revoked for non-use pursuant to art.51 of the CTM Regulation.
(2) The amendments which should be made to the specifications of the CTMs pursuant to (1).
(3) Whether either CTM was invalidly registered pursuant to art.7(1)(b) and/or art.7(1)(c).
(4) If so, whether either CTM has acquired distinctive character pursuant to art.7(3).
(5) Whether Sofaworks has infringed either CTM pursuant to art.9(1)(b).
(6) Conversion of either CTM to a UK national application pursuant to art.112.
Passing Off
(7) Whether Sofa Workshop owns goodwill in its business associated with its trade name.
(8) Whether Sofaworks' use of its trade name constitutes a misrepresentation.
(9) If so, whether as a consequence Sofa Workshop has suffered or is likely to suffer damage.
Non-use of the CTMs
Sofa Workshop accepts that it has not used its CTMs in relation to some of the goods and services in the specifications and that accordingly both CTMs must be partially revoked.
Sofaworks puts its case on non-use in two ways. First, while it concedes that there has been use of both marks by Sofa Workshop in the United Kingdom, it argues that there has been no use outside this country and therefore both CTMs must be revoked in toto. Secondly, if that is wrong, Sofaworks argues that Sofa Workshop's admissions of non-use do not go far enough and nor do the consequential amendments to the specifications which Sofa Workshop is prepared to accept.
The Law
Article 15 of the Regulation provides in relevant part as follows:
Article 15
Use of Community trade marks
1. If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use. …"
One of the sanctions referred to in art.15(1) is contained in art.51, namely that a CTM may be revoked for non-use:
Article 51
Grounds for revocation
1. The rights of the proprietor of the Community trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:
(a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; …"
…
2. Where the grounds for revocation of rights exist in respect of only some of the goods or services for which the Community trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods or services only."
Whether 'genuine use in the Community' requires use in more than one Member State
In Leno Merken BV v Hagelkruis Beheer BV ( C-149/11) [2013] E.T.M.R. 16, Leno opposed the registration of Hagelkruis's mark OMEL, relying on Leno's earlier registered mark ONEL. It was not in dispute that the marks were similar, that they were registered for identical or similar services and that the use of OMEL would give rise to a likelihood of confusion. The only point at issue was whether Leno had put its ONEL mark to genuine use in the Community during the five years preceding the date of publication of Hagelkruis's application to register OMEL.
The Court of Justice of the European Union ("CJEU") identified the basic principles underlying the law on non-use of a trade mark by reference to its earlier case law:
"[28] The Court has already – in the judgments in Ansul [2003] E.T.M.R. 85 and Sunrider [2006] E.C.R. I-4237 and the order in La Mer Technology [2004] E.T.M.R. 47– interpreted the concept of "genuine use" in the context of the assessment of whether national trade marks had been put to genuine use, considering it to be an autonomous concept of EU law which must be given a uniform interpretation.
[29] It follows from that line of authority that there is 'genuine use' of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether there is real commercial exploitation of the mark in the course of trade, particularly the usages regarded as warranted in the economic sector concerned as a means of maintaining or creating market share for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see Ansul [2003] E.T.M.R. 85 at [43], Sunrider [2006] E.C.R. I-4237 at [70], and the order in La Mer Technology [2004] E.T.M.R. 47 at [27]).
The point at issue in Leno Merken was whether establishing genuine use depended on the geographical extent of the use, particularly whether the mark had to have been put to use in more than one Member State. It was common ground that Leno had put its mark to genuine...
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