Don’t Couch in one Territory, Case Highlights Importance of use of Community Trade Marks

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A recent decision of the UK Intellectual Property Enterprise Court in Sofa Workshop v Sofaworks has highlighted the importance of demonstrating the use of a Community Trade Mark (‘CTM’) in multiple countries.

Sofa Workshop held two CTMs for the ‘SOFA WORKSHOP’ word marks and although its use of those CTMs within the UK alone constituted coverage of over 12% of the EU’s total population, the CTMs were revoked due to the fact that use was held not to validly extend to another EU member state. In its defence Sofa Workshop highlighted that it had made use of its CTM within the EU-wide magazine World of Interiors but it was held that on the facts this use was not targeted at non-UK customers and was therefore restricted to the one territory.

Whilst a CTM can offer a business added protection in providing it with EU-wide (and not just national) protection of its brand, this case highlights the need to demonstrate effective use of the CTM in more than one EU member state, to avoid challenge and the CTM being revoked.

It should be noted however, that existing CTM owners, those who are considering making a CTM application, or those looking to expand their existing UK protection should be aware that they have a period of five years within which to demonstrate use of a trade mark to avoid losing it for lack of use. Having a plan for expansion within the EU can therefore reduce the possibility of a valid CTM becoming revoked and there are multiple ways in which this can be successfully undertaken including use via e-commerce and through using agents and distributors.

For advice and assistance on protecting and expanding the use of your brand both within the UK and across the wider territories of the EU, contact John Pickervance, specialising in Commercial Contracts and Intellectual Property by telephone on 0800 689 3206 or via our Contact Form.

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