Use of a Community trade mark in only one Member State does not maintain the right

Abstract

Community Trade Mark Regulation, Art. 15 (1) The use of a Community trade mark (CTM) in a single Member State is as a rule not sufficient to maintain the right. Such use maintains a CTM only under exceptional circumstances, eg if the market for the goods or services in question is restricted to the territory of a single Member State. Intellectual Property Enterprise Court (IPEC), England and Wales, decision of 29.6.2015 – [2015] EWHC 1773 (IPEC) – Sofa Workshop The Sofa Workshop Ltd sought to prevent Sofaworks Ltd from using the name “Sofaworks”, claiming inter alia infringement of two CTMs consisting of the word “Sofa Workshop”. It was not disputed that the trade marks had been extensively used in the United Kingdom. Sofaworks held both marks to be descriptive and, more significantly, argued that use in the UK alone did not constitute genuine use of the CTMs. The IPEC upheld the action on the grounds of passing-off. One of the decision's many obiter dicta deserves consideration. The court indeed found that the trade marks had not been put to genuine use. It addressed in detail the Court of Justice of the European Union (CJEU) ONEL decision (Leno Merken, C-149/11, ECLI:EU:C:2012:816). In that decision, the trade mark in question had only been used in the Netherlands. The CJEU held that territorial scope is only one of the factors when determining genuine use, a factor which must be included in an overall analysis of the relevant circumstances. It stated that, with a CTM, the overall assessment must take into account that the territory of protection of a CTM is larger than that of a national trade mark. The CJEU referred to Art. 15 (1) of Community Trade Mark Regulation 207/2009 which requires “use in the Community”. From this wording (“Community”), however, the CJEU concluded that national borders per se play no role in determining the size of the territory of use necessary for genuine use (para 44) and that accordingly, if eg the market is confined to the territory of one Member State, the use in only that Member State could be sufficient (para 50).