Use In One Country Now No Longer Enough To Show Genuine Use Of A CTM?

Historically one of the biggest selling points of the Community Trade Mark (CTM) system since its inception has been that while it provides a trade mark owner with the opportunity to obtain a single trade mark registration covering all member states of the European Union (EU), the owner only need to show the mark is in use in a single EU country to maintain its pan-EU rights. The recent case in the UK's Intellectual Property Enterprise Court, Sofa Workshop v Sofaworks, contradicts that view.

The case concerned a claim for trade mark infringement and passing off (a breach of unregistered trade mark rights) by Sofa Workshop Ltd against Sofaworks Ltd on the basis of the former's rights in the mark SOFA WORKSHOP and the latter's use of the mark SOFAWORKS. While the claimant was successful on passing off grounds it had its CTM registrations cancelled on grounds of descriptiveness and, most interestingly, on non-use grounds.

Previous case law of the Court of Justice of the European Union in historic cases such as Sunrider and La Mer Technology had held that even minimal use of marks in a single part of a single member state of the EU could constitute genuine use of a national trade mark registration of an individual EU country. The question of genuine use of a CTM registration was discussed in Leno Merken BV v Hagelkruis Beheer BV (C-149/11) [2013] E.T.M.R. 16 which held that the "territorial borders of Member States (of the EU) should be disregarded" in the assessment of whether there has been genuine use of CTMs.

In this particular case it was held that the SOFAWORKS mark had been used extensively in the UK but it was found there was no use in other countries. The judge held that because use was confined to the UK the CTMs in question should be cancelled for non-use in the EU.

In reaching this decision the judge referred to the Leno Merken case mentioned above which had separately stated that use in a single member state may not be wide enough to constitute genuine use in the EU of a CTM even if there may be circumstances (such as the size of the market for the goods in question) in which this would constitute genuine use of a CTM. The judge held such circumstances did not apply in this case and therefore cancelled the marks in question.

It is...