Sofa Workshop, trading under that name, were the proprietors of two Community Trade Mark Registrations for the Mark SOFA WORKSHOP covering a range of goods and services in Classes 18, 20, 24 and 35.Sofa Workshop alleged that the similarity in their respective trading names is such that Sofaworks infringed Sofa Workshop’s two Community Trade Marks and passed itself off as being associated with Sofa Workshop.Trade marks and registered designs can complement each other and they can also come into conflict with each other.Several recent decisions have seen trade marks being used to invalidate a registered Community design (RCD) under Article 25(1)(e) of the Community Designs Regulation(No. Recently, the General Court gave a decision (T-608/11) in a long-running dispute relating to highlighter pens.6/2002) allows for a registered Community design to be declared invalid if a distinctive sign is used in the design, and Community law or the law of the Member State governing that sign confers on the right holder of the sign the right to prohibit such use.This ground must be invoked by the right holder of the sign.The evidence of use filed clearly demonstrated that the Mark had acquired a level of distinctiveness in the UK in relation to sofas and related products prior to the invalidity action being filed.However, notwithstanding the extensive evidence of use of the Mark in the UK, no evidence of use of the Mark in the other English speaking countries of the European Union was filed.
If followed, it means that use of a Community Trade Mark in one country alone is not sufficient to defeat a revocation action on the grounds of non-use and maintain the Registration(s) where the market for the goods or services in question in European-wide.
The Mark SOFA WORKSHOP was considered to consist exclusively of signs which may serve in the course of trade to designate a characteristic of some or all of the goods and services for which the Mark was registered. Regarding the claim of non-use, Judge Hacon held that even if the Registrations were valid, they were subject to revocation for non-use and the onus was on Sofa Workshop to demonstrate use of the Marks throughout the European Union.
Extensive evidence of use was filed by Sofa Workshop dating back to 1986, however, the evidence of use related solely to the UK (save one instance of a non-UK sale).
In another recent General Court decision, T-55/12, an RCD for a product intended to be incorporated into cleaning devices was held to be invalid in view of a 3D European Community trade mark (CTM), registered for cleaning products in classes 3 and 21.
Two further recent decisions of the Invalidity Division of OHIM – ICD9026 and ICD9042 – provide examples of the owners of registered trade marks being able to invalidate a subsequently filed RCD, which incorporates an identical sign to the registered mark.