The Sofa Workshop Ltd v Sofaworks Ltd

Genuine use of a Community trade mark is assessed globally, having regard to all relevant circumstances. Territorial borders are disregarded, but use will generally need to extend beyond one Member State unless the relevant market is confined to a single Member State. A sign is descriptive under art.7(1)(c) where the average consumer would immediately recognise it as designating a characteristic of the goods or services. Acquired distinctiveness must be shown throughout the territory where the descriptive ground applies. Likelihood of confusion is a qualitative assessment from the perspective of the average consumer and may be established where a substantial proportion of relevant actual consumers is likely to be confused. The court also held that the same evidence established goodwill, misrepresentation and damage for passing off.

The claimant and defendant were competing sofa and furniture retailers. The claimant relied on two Community trade marks for SOFA WORKSHOP, alleging infringement and passing off arising from the defendant’s use of SOFAWORKS.

The defendant counterclaimed for revocation for non-use and invalidity on descriptiveness and lack of distinctive character grounds. The claimant admitted some non-use and relied on acquired distinctiveness. The court also considered, contingently, infringement, conversion and passing off.

1. Revocation for non-use. Applying Leno Merken BV v Hagelkruis Beheer BV (C-149/11) [2013] E.T.M.R. 16, the court held that genuine use in the Community is assessed by all relevant circumstances, including territorial extent, scale, frequency and regularity. Territorial borders must be disregarded, but use will generally require use in more than one Member State. The single-State exception applies where the relevant market is confined to that State. The claimant’s UK use, limited foreign evidence and one Copenhagen sale did not establish genuine use in the Community. Both marks were therefore liable to revocation.
2. Specification. If revocation were not ordered, the specifications would be amended to reflect the goods and services for which use was proved.
3. Invalidity. The words SOFA WORKSHOP, used for sofas and related goods, immediately conveyed to the average consumer a characteristic concerning the place of manufacture or supply. The marks therefore fell within art.7(1)(c), subject to acquired distinctiveness. The claimant proved distinctiveness in the UK but not throughout the Member States in which English-speaking consumers would recognise the descriptive meaning. Article 52(2) did not save the marks.
4. Infringement. Contingently, the similarity between SOFA WORKSHOP and SOFAWORKS was visual, aural and conceptual. The court considered the context of use and evidence of actual confusion. A proportion of relevant actual consumers, well above de minimis though below half, was likely to believe that the goods came from the same or economically linked undertakings. That materially damaged the origin function of the marks and would have constituted infringement under art.9(1)(b).
5. Passing off. The claimant had goodwill in England and Wales. The defendant’s sign represented to a sufficient proportion of the relevant public that the businesses were the same or associated, causing material damage. The passing-off claim succeeded.