Getting comfortable with trade marks15/07/2015
When considering your business plan, it can be a good idea to give some thought to the market you want to operate in. One aspect of this will be how you wish to deal with intelllectual property within your business, such as any potential trade marks you may have. Registration of trade marks can bring many benefits for your business but essentially it allows you to protect your mark against infringement and provides you with a commercially valuable asset. But should you register for protection in the UK or extend this to the entire European Union (EU)?
This is an important differentiation to make, as the people at the Sofa Workshop Limited recently found out.
The Sofa Workshop Limited, the DFS owned retailer of bespoke, high-end sofas and other furniture, recently challenged the validity of the trade mark held by Sofaworks (a direct competititor in the UK). Sofaworks had only recently changed their name from CSL in 2013, and shortly after, found themselves amidst a legal battle with the Sofa Workshop for trade mark infringement and passing-off for being too similar.
This case, heard in the High Court, brings up some interesting points not only for those of us who like a good sofa sale, but also, for those considering whether to apply for a UK Trade Mark (UK TM) or a Community Trade Mark (CTM). The Sofa Workshop had successfully registered two CTMs and began a challenge of Sofaworks’ new change of name and UK TM. Sofaworks rejected the allegations, counter-claiming that their competitor’s CTM name should be revoked for non-use in the EU.
The court accepted this argument, finding that for a CTM to be valid, genuine use must be evident in the first 5 years from registration, at least beyond one member state in the EU. The Sofa Workshop operates predominantly in the UK and they failed to prove otherwise to the court, meaning their CTMs will be revoked.
This decision highlights the risks involved in making this crucial decision as trade mark protection can be lost altogether. When it comes to choosing the route that is right for you and your business, consider where you see your business operating and expanding into the next 5 years. Other factors to keep in mind are as follows:
|Territorial scope||Promotion across the UK||Protection in all 28 member states (and automatically|
extended to new members) within the EU.
|Value for money||£200 application fee and £50 for|
each additional class.
| €900 application fee (includes up to 3 classes) and|
€150 for each additional class.
|Risk of opposition||The UK Intellectual Property Office can object at registration if the criteria is not met.|
If it progresses to the 2 month opposition period, it is less likely to be
opposed than a CTM.
|The Office for Harmonization in the Internal Market does not|
asses each application so more likely to proceed to opposition
period. Once progressed to opposition period, it is more likely to
opposed due to greater exposure to a larger area.
|Genuine use||Within 5 years from registration, must be credible|
evidence of actual commercial use in the UK.
Within 5 years from registration, there must be genuine use beyond one member state.
As a side note, the judge did find there to be a passing-off due to a likelihood of confusion and the goodwill generated by the Sofa Workshop. Don’t be surprised to see a further change of name from Sofaworks in the near future….
If you would like any further advice on this subject, or advice on intellectual property matters in general, please contact Antony Hall, Partner and Head of Commercial at Mincoffs Solicitors on 0191 281 6151 or email email@example.com