SOFA case shows that Community trade marks need to be used in more than one country to prevent them being revoked

A decision of the Intellectual Property Enterprise Court has confirmed that, in most cases, unless a Community trade mark is used in more than one EU country it will be vulnerable to revocation on the ground of non-use.

Community Trade Marks ("CTMs") represent excellent value for money. For far less money than it would cost to register a trade mark in each of the 28 EU member states, you can file a single application and achieve registered trade mark protection throughout the whole of the EU.

However, if a Community Trade Mark is not used for five (or more) consecutive years post registration it can be revoked on the ground of non-use.

For many years practitioners were concerned that if a CTM was only used in trade in one member state (e.g. the UK) then it might mean the CTM could be revoked on the ground of non-use. However, until there was a court case that determined the issue they could not be certain.

In The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773, Judge Hacon decided that, in order to maintain a CTM, there needs to be evidence that the mark has been used to create or maintain a share in the market for the relevant goods or services across a section of the EU, extending beyond one Member State. If not, the CTM can be revoked for non-use. The only exception to this is where the market for the relevant goods or services is restricted to the territory of a single Member State (which will be rare for most goods and services).

In the case in issue, Sofa Workshop had put its CTMs to genuine use on an extensive scale in the UK in the relevant 5 year period, but not anywhere else in the EU. However the market for the goods and services covered by the CTMs (i.e. furniture, sofas, etc.) was not restricted to the territory of the UK, and there was no other reason to override the general requirement of use beyond the boundaries of the UK. Therefore, the CTMs were revoked as they had not been used in the five year period to maintain or create market share within the Community for the goods or services covered by the marks.

So the message is clear - do not register your trade mark as a CTM unless you plan to use your trade mark in more than one EU member state. If you only plan to use the mark in one member state, you would do better to register the mark as a national trade mark in that country.

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