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Intellectual Property Enterprise Court
You are here: BAILII >> Databases >> Intellectual Property Enterprise Court >> The Sofa Workshop Ltd v Sofaworks Ltd  EWHC 1773 (IPEC) (29 June 2015)
Cite as:  ETMR 37,  EWHC 1773 (IPEC)
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INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
| THE SOFA WORKSHOP LIMITED
|- and -
John Baldwin QC and Fiona Clark (instructed by DLA Piper UK LLP) for the Defendant
Hearing dates: 29-30 April 2015
Crown Copyright ©
Judge Hacon :
(1) CTM No. 4,229,605 ("the 605 Mark"), the word mark SOFA WORKSHOP, registered with effect from 11 February 2005 in respect of the following goods and services in the stated classes:Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips harness and saddlery.Class 20: Furniture; pillows, bolsters, mattresses; beds, sofa beds; mirrors; picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.Class 24: Textiles; textile articles, textile piece goods; bed and table covers; household linen; linen cloth; bed linen; bath linen; table linen; table cloths; curtains of textile or plastic; pillow shams; pillow cases; sheets; towels; eiderdowns; duvets; covers for eiderdown and duvets; napery; napkins; serviettes; table mats (not of paper); face towels; flannels; tissues of textile for removing make-up; traced cloth for embroidery; tapestry (wall hangings) of textile; rugs (travelling); furniture coverings of plastic.Class 35: Retail services of a general store specialising in household furniture (including home office furniture), appliances, apparatus, textiles and security.
(2) CTM No. 301,531 ("the 531 Mark"), also the word mark SOFA WORKSHOP, registered with effect from 1 August 1996 in respect of the following goods in the stated classes:Class 20: Furniture; upholstered chairs and sofas.Class 24: Textile piece goods for furnishings.
(1) The extent to which each of the CTMs should be revoked for non-use pursuant to art.51 of the CTM Regulation.
(2) The amendments which should be made to the specifications of the CTMs pursuant to (1).
(3) Whether either CTM was invalidly registered pursuant to art.7(1)(b) and/or art.7(1)(c).
(4) If so, whether either CTM has acquired distinctive character pursuant to art.7(3).
(5) Whether Sofaworks has infringed either CTM pursuant to art.9(1)(b).
(6) Conversion of either CTM to a UK national application pursuant to art.112.
(7) Whether Sofa Workshop owns goodwill in its business associated with its trade name.
(8) Whether Sofaworks' use of its trade name constitutes a misrepresentation.
(9) If so, whether as a consequence Sofa Workshop has suffered or is likely to suffer damage.
Non-use of the CTMs
1. If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use. … "
1. The rights of the proprietor of the Community trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:
(a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; …"
2. Where the grounds for revocation of rights exist in respect of only some of the goods or services for which the Community trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods or services only."
Whether 'genuine use in the Community' requires use in more than one Member State
" The Court has already – in the judgments in Ansul  ETMR 85 and Sunrider  ECR I-4237 and the order in La Mer Technology  ETMR 47 – interpreted the concept of "genuine use" in the context of the assessment of whether national trade marks had been put to genuine use, considering it to be an autonomous concept of EU law which must be given a uniform interpretation.
 It follows from that line of authority that there is 'genuine use' of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether there is real commercial exploitation of the mark in the course of trade, particularly the usages regarded as warranted in the economic sector concerned as a means of maintaining or creating market share for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see Ansul  ETMR 85 at , Sunrider  ECR I-4237 at , and the order in La Mer Technology  ETMR 47 at ).
" Third, contrary to the appellant's assertions, the fact that in the present case the proof of use of the earlier trade mark was established only for the sale of products intended for a single customer does not a priori preclude the use being genuine (see, to that effect, order in La Mer Technology, paragraph 24), even though it follows from that situation that the mark was not present in a substantial part of the territory of Spain, in which it is protected. As OHIM has maintained, the territorial scope of the use is only one of several factors to be taken into account in the determination of whether it is genuine or not."
" The Court has also stated that the territorial scope of the use is only one of several factors to be taken into account in the determination of whether that use is genuine or not (see Sunrider  ECR I-4237 at ).
 That interpretation may be applied by analogy to Community trade marks since, in requiring that the trade mark be put to genuine use, Directive 2008/95 and Regulation 207/2009 pursue the same objective.
 Account must nonetheless be taken, when applying by analogy to Community trade marks the case law cited in  of this judgment, of the difference between the territorial extent of the protection conferred on national trade marks and that of the protection afforded Community marks, a difference which is in any event apparent from the wording of the provisions relating to the requirement for genuine use which apply to those two types of marks respectively."
" It should, however, be observed that, as is apparent from the case law referred to in  of this judgment, the territorial scope of the use is not a separate condition for genuine use but one of the factors determining genuine use, which must be included in the overall analysis and examined at the same time as other such factors. In that regard, the phrase 'in the Community' is intended to define the geographical market serving as the reference point for all consideration of whether a Community trade mark has been put to genuine use.
 It is therefore necessary, in order to reply to the questions raised, to ascertain what is encompassed by the phrase 'genuine use in the Community' for the purposes of art.15(1) of Regulation 207/2009."
" It follows from the foregoing considerations that the territorial borders of the Member States should be disregarded in the assessment of 'genuine use in the Community' within the meaning of art.15(1) of Regulation 207/2009."
" Whilst there is admittedly some justification for thinking that a Community trade mark should – because it enjoys more extensive territorial protection than a national trade mark – be used in a larger area than the territory of a single Member State in order for the use to be regarded as 'genuine use', it cannot be ruled out that, in certain circumstances, the market for the goods or services for which a Community trade mark has been registered is in fact restricted to the territory of a single Member State. In such a case, use of the Community trade mark on that territory might satisfy the conditions both for genuine use of a Community trade mark and for genuine use of a national trade mark."
" Secondly, whilst it is reasonable to expect that a Community trade mark should be used in a larger area than a national mark, it is not necessary that the mark should be used in an extensive geographic area for the use to be deemed genuine, since such a qualification will depend on the characteristics of the product or service concerned on the corresponding market. (see, by analogy, with regard to the scale of the use, Ansul  ETMR 85 at )."
The qualification – that it is not necessary that a mark should be used in an 'extensive' geographic area for the use to be deemed genuine – is ambiguous. I think that in paragraph 54 the Court was probably repeating what it had said in paragraph 50 regarding the territorial extent of genuine use, using different words, but either way it underlines the implied default requirement that use beyond one Member State is a necessary ingredient of genuine use in the Community as a whole.
"Article 15(1) of Regulation 207/2009 of 26 February 2009 on the Community trade mark must be interpreted as meaning that the territorial borders of the Member States should be disregarded in the assessment of whether a trade mark has been put to 'genuine use in the Community' within the meaning of that provision.
A Community trade mark is put to 'genuine use' within the meaning of art.15(1) of Regulation 207/2009 when it is used in accordance with its essential function and for the purpose of maintaining or creating market share within the European Community for the goods or services covered by it. It is for the referring court to assess whether the conditions are met in the main proceedings, taking account of all the relevant facts and circumstances, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and the scale of the use as well as its frequency and regularity."
It is essentially a repetition of what had been said in Ansul, La Mer and Sunrider adapted to the context of a Community mark, with the specific instruction that the territorial borders of Member States are to be disregarded.
(1) The question of whether there has been 'genuine use in the Community' is not to be approached from the perspective of whether there has been use of the mark in more than one, two or any other particular number of Member States. Territorial borders are to be disregarded.
(2) A Community trade mark is put to genuine use in the Community where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, and used for the purpose of maintaining or creating market share within the European Community for the goods or services covered by the mark.
(3) Whether the mark has been so used will depend on all relevant facts and circumstances, including the characteristics of the market concerned, the nature of the relevant goods and services, the territorial extent and scale of use, and the frequency and regularity of use.
(4) Purely in relation to the territorial extent of use, genuine use in the Community will in general require use in more than one Member State.
(5) An exception to that general requirement arises where the market for the relevant goods or services is restricted to the territory of a single Member State.
What qualifies as use of a mark in a particular Member State?
" … The right question, I think, is to ask whether a reasonable trader would regard the use concerned as 'in the course of trade in relation to goods' within the Member State concerned. Thus if a trader from state X is trying to sell goods or services into state Y, most people would regard that as having a sufficient link with state Y to be 'in the course of trade' there. But if the trader is merely carrying on business in X, and an advertisement of his slips over the border into Y, no businessman would regard that fact as meaning that he was trading in Y. This would especially be so if the advertisement were for a local business such as a shop or a local service rather than for goods. I think this conclusion follows from the fact that the Directive is concerned with what national law is to be, that it is a law governing what traders cannot do, and that it is unlikely that the Directive would set out to create conflict within the internal market. So I think Mr Miller is right. One needs to ask whether the defendant has any trade here, customers buying goods or services for consumption here. It was that sort of concept I had in mind in 800 FLOWERS Trade Mark.
 On the facts here, I think the advertisement in Homes & Gardens is not an infringing use. I recognise that my view is provisional, this being only an application for summary judgment. Ultimately the question of the extent to which national trade mark law is permitted to impinge on trade within other countries may have to be considered by the European Court of Justice." (original emphasis)
Amendment to the specifications
The 605 Mark
"Bolsters, mattresses, beds, upholstered furniture, upholstered chairs, sofas, snugglers, chaises longues, storage stools and footstools, sofa beds, occasional tables"
The points of contention were whether this should include bolsters, mattresses and occasional tables. Mr Staden's evidence was that 911 bolsters were sold under the SOFA WORKSHOP mark between May 2009 and May 2014 and exhibited sample customer orders. Mr Staden also exhibited evidence of a few occasional tables having been sold between February 2011 and March 2013. Andrea Summers, Store Manager of Sofa Workshop said that there were about 10 aerobed mattresses in stock but her evidence was not clear in that she may have been referring to entire aerobeds, of which she said that one was typically sold per month. Mr Staden I think clarified matters. Under the heading 'Mattresses' in his witness statement, he unambiguously indicated that what he meant by 'mattresses' was aerobed style inflatable mattress beds. This was confirmed by the exhibited orders. I take the view that use of the mark in relation to these goods was use in relation to beds. I would therefore allow the specification proposed by Sofa Workshop with the deletion of mattresses:
"Bolsters, beds, upholstered furniture, upholstered chairs, sofas, snugglers, chaises longues, storage stools and footstools, sofa beds, occasional tables."
"Textiles, textile articles, textile piece goods".
I was told by Mr Silverleaf that 'textile piece goods' means lengths of fabric. Mr Baldwin submitted that this clearer term should be used. The evidence suggested that sales of 'textiles' by Sofa Workshop amounted only to sales of fabric lengths. 'Textile articles', which amounts to any article made from textiles, is broad. I think the average consumer would sub-divide that category into more specific items. Sofa Workshop's evidence concerned the sale of scatter cushions, bolsters and throws. Bolsters belong better in class 20, which leaves cushions and throws. Sofaworks conceded that 'loose covers of sofas and chairs' should be included and consequently I think a fair specification would be:
"Fabric lengths, cushions, throws, loose covers of sofas and chairs."
"Retail services of a store specialising in household furniture."
The present specification is:
"Retail services of a general store specialising in household furniture (including home office furniture), appliances, apparatus, textiles and security"
Mr Baldwin submitted that deletion of the word 'general' broadened the first part of the specification, contrary to art.43(1) and (2) of the CTM Regulation. As a matter of ordinary construction, deleting 'general' either makes no difference or, as Mr Baldwin said, the specification is broadened. That said, this has the hallmarks of a dispute about nothing much. Subject to further submissions I would accept
"Retail services of a furniture store specialising in household furniture".
The 531 Mark
"Upholstered furniture, upholstered chairs, sofas, snugglers and chaises longues, storage stools and footstools; beds"
and in class 24:
"Fabric lengths, loose covers of sofas and chairs and textile furnishing accessories."
Invalidity pursuant to art 52 and arts.7(1)(b) and 7(1)(c)
1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:
(a) where the Community trade mark has been registered contrary to the provisions of Article 7;
2. Where the Community trade mark has been registered in breach of the provisions of Article 7(1)(b), (c) or (d), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
3. Where the ground for invalidity exists in respect of only some of the goods or services for which the Community trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.
1. The following shall not be registered:
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.
3. Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.
" The most recent judgment of the CJEU to which we were referred is Agencja Wydawnicza Technopol sp z oo v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (C-51/10 P)  E.T.M.R. 34 . A number of points emerge from that judgment.
 The court first identified the underlying interest protected by art.7(1)(c) as:
'…that of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services…' ().
 Secondly, in order to come within art.7(1)(c) it is not necessary that the sign in question actually be in use at the time of the application for registration in a way that is descriptive. It is sufficient that the sign could be used for such purposes ().
 Thirdly, it is irrelevant whether there are other, more usual, signs than that at issue for designating the same characteristics of the goods or services referred to in the application for registration. Article 7(1)(c) does not depend for its application on the sign at issue being the usual means of referring to the goods or their characteristics ( and ).
 Fourthly, the context of the list of specific terms in art.7(1)(c) (quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service) shows that those terms are all regarded as 'characteristics' of the goods. The list is not exhaustive, as the reference to 'other characteristics' shows ().
 Fifthly, and importantly, the court said this at :
'The fact that the legislature chose to use the word 'characteristic' highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 40/94 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. As the Court has pointed out, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation No 40/94 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics … " .
 Thus it is the presumed perception of the average consumer which is relevant. It is not of course enough if the connection between the signs and a characteristic of the goods does not dawn immediately on the average consumer. If it requires any thought or explanation it is not 'easily recognisable'.
 Thus, in Agencja Wydawnicza Technopol  E.T.M.R. 34, the applicant was seeking to register the numeral "1000" in relation, for example, to puzzles. The General Court had held:
'26. In that regard, it should be noted that, as is apparent from paragraphs 18 and 19 of the contested decision, there is from the point of view of the relevant public a direct and specific link between the sign '1000' and some of the characteristics of the goods concerned. The sign '1000' alludes to a quantity and will immediately be perceived by the relevant public, without further thought, as a description of the characteristics of the goods in question, in particular the number of pages and works, amount of data, or the number of puzzles in a collection, or the ranking of items referred to in them. That conclusion cannot be invalidated by the fact that the mark applied for is composed only of figures, since … the missing information may be readily identified by the relevant public, the association between the figure and those characteristics of the goods in question being immediate.
27. In particular, as the Board of Appeal stated in paragraphs 18 and 19 of the contested decision, brochures, periodicals and magazines frequently publish ranking lists and collections, with the preference then being for round numbers in order to indicate content, the Board of Appeal referring in particular in that regard to the example of the publication '1000 Fragen und Antworten' ('1000 Questions and Answers'). This strengthens the descriptive relationship that exists from the point of view of the average consumer between the goods in question and the [sign '1000']. The court considered that, in that context, the average consumer would perceive 1000 as an indication of the number of puzzles, and for that reason it was unregistrable."
 Other cases make it clear that it is enough if at least one of the possible meanings designates a characteristic of the goods: see, e.g. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v Wm Wrigley Jr Co ("DOUBLEMINT") (C-191/01 P) [ ECR I-12447;  RPC 18 at .
 It is nevertheless the case that signs which are candidate trade marks lie on a continuum between the entirely generic, through the descriptive to the inherently distinctive. Not every word which alludes to or is suggestive of some aspect of the goods or services is necessarily unregistrable. It is of course trite that it is not an objection to registration that the word has a dictionary meaning, or is an ordinary English word. The objection bites on relationships between the word and the characteristics of the goods or services for which it is sought to be registered which the average consumer will immediately perceive.
 I have found helpful and agree with the analysis of the Advocate General in his opinion in DOUBLEMINT  ECR I-12447 at –. He draws attention to the fact that that there is no clear-cut distinction between indications which designate a characteristic and those which merely allude suggestively to it and suggests three considerations which may determine on which side of the line the indication lies. Although the entire passage repays reading, I will summarise his three points as: (i) how factual and objective is the relationship between an indication and the product or one of its characteristics? (ii) how readily is the message of the indication conveyed? and (iii) how significant or central to the product is the characteristic? Asking these questions will assist a fact-finding tribunal to determine whether it is likely that a particular indication may be used in trade to designate a characteristic of goods."
" Of the goods covered, some are exclusively for babies or young children. Thus it is for diaper bags, booties, baby clothing, layettes and soft toys. As regards the other goods, namely books, stationery, cards, plates, cups, hats, shoes and mobiles, all those categories of goods include those which, because of their shape, their size, or their look, are specifically intended for use by babies or young children.
 Admittedly, the immediate meaning of the sign in question designates a place in which that category of persons may be. However, that meaning must be analysed in relation to the goods covered in the trade mark application (see paragraph 17 above). In that perspective, the word sign in question is perfectly appropriate to designate goods capable of being used in a nursery and, therefore, for use by babies or young children. Since the goods in question are all capable of being intended, exclusively or potentially, for those users, the relevant public will easily establish a direct and specific link between the sign and the goods in question. The fact, relied upon by the applicant, that the goods covered can obviously be used outside a nursery does not undermine that conclusion, since, for the average consumer, that possibility does not affect his understanding of the intended purpose of the goods in question.
 It follows from the foregoing that the Board of Appeal correctly held that the sign in question is descriptive of the intended purpose of the goods, and, by extension, of the category of end users, namely babies and young children (paragraph 10 of the contested decision)."
"Contemporary sofa, custom made sofa, bespoke sofa, luxury sofa or designer sofa, whatever style of sofa you require we can create it. Why? Because our sofa's are handmade in our sofa workshop to your precise specifications and budget"
"Why not come and visit our sofa workshop for yourself, and remember if there is nothing that takes your fancy then we can design and handcraft the sofa of your dreams!"
There was also evidence that 41 businesses use 'Workshop' in their names, though none use it together with 'Sofa'. These were names which included 'Blinds Workshop', 'Curtain Design Workshop', 'The Cane Seating Workshop', 'Furniture Repair Workshop' and 'The Upholstery Workshop'.
"It's because you're all so different that we make our sofas to order, especially for you, in our British workshops. And it's because we make them like this we can offer you options. No one can match us for choice." (original underlining)
"It takes 4 years to qualify as a British upholsterer and many of our upholsterers have been 'on the bench' since they left school, honing their skills to perfection. If you visited our workshops you may be surprised at how hands on and traditional it is. There's no swanky robots whizzing about or production lines. One person will work on your sofa from start to finish, taking tremendous pride in what they do. So much so they will sign every sofa they complete, knowing full well if there's a problem it can be traced back to them. Trust us this would really dent their pride." (original underlining)
Whether the CTMs have become distinctive in consequence of use
"… only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the Community in which it initially had descriptive character for the purposes of Article 7(1)(c) (see, to that effect, Case C-25/05 P Storck v OHIM, paragraph 83)."
" It is clear from the case law that, in order to have the registration of a trade mark accepted under art.7(3) of Regulation 207/2009, the distinctive character acquired through the use of that trade mark must be demonstrated in the substantial part of the European Union where it was devoid of any such character under art.7(1)(b) of the Regulation (Ford Motor Co v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (OPTIONS) (T-91/99)  ECR II-1925;  ETMR 554 at ). The part of the Community referred to in art.7(2) may be comprised of a single Member State (Storck KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (C-25/05 P)  ECR I-5719 at ). Consequently, distinctiveness acquired through use must be demonstrated in all the Member States in which the existence of the ground for refusal had been established (see, to that effect, Bovemij Verzekeringen NV v Benelux-Merkenbureau (C-108/05)  ECR I-7605;  ETMR 29 at ).
 In the present case, the Board of Appeal found, in para.18 of the contested decision, that the relevant consumers were European English-speakers. Next, it considers, in para.33 of the contested decision, that the applicant ought to have demonstrated that the word sign at issue had acquired distinctiveness not only in the English-speaking countries of the European Union, but also in all the other countries where basic English words could be understood, that it is to say in all the countries of the European Union.
 The applicant challenges only that last assertion and claims that the public consisting of European English-speakers cannot include persons with a very rudimentary knowledge of English.
 Even if the Board of Appeal construed the concept of "European English-speakers" too broadly, it is clear, and the applicant has, moreover, never claimed the contrary, that the relevant public does not only consist of nationals of the United Kingdom and Ireland whose mother tongue is English.
 It is settled case law that a word sign consisting of English words the combination of which is grammatically correct may have a meaning not only for a public who are native English speakers, but also for a public which has sufficient knowledge of the English language (see NEW LOOK (T-435/07) at  and the case law cited). As noted in  above, the General Court has previously confirmed that a basic understanding of the English language by the general public, in any event, in the Scandinavian countries, the Netherlands and Finland is a well-known fact (NEW LOOK (T-435/07) at ). As pointed out in the same paragraph, this also applies to Malta, where English is one of the official languages, and to Cyprus.
 With regard to all of those countries, the applicant never furnished the slightest proof that the mark applied for had become distinctive through use. In particular, the letters and statements mentioned in  above, and the evidence of use submitted to OHIM concern only the United Kingdom, Ireland and Germany.
 Consequently the applicant's second plea must be dismissed."
(1) Electronic customer interest forms completed by shop assistants since 2011 indicate that around 7% of customers cited an advertisement, an article or a recommendation as their source of interest in Sofa Workshop's products. It is likely that those products were identified in the customers' minds by the trade name. A further 25% of customers identified themselves as repeat customers, which indicated a trade loyalty. This is likely to be in the form of brand loyalty, other possibilities being improbable.
(2) There were examples of reviews posted online which referred to Sofa Workshop and its products by that name.
1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
" There is much CJEU learning on the interpretation and application of art.9(1)(b) . In Specsavers International Healthcare Ltd v Asda Stores Ltd  EWCA Civ 24;  ETMR 17;  FSR 19 at  Kitchin LJ approved the following summary of the principles to be derived from the court's jurisprudence:
a. the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
b. the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
c. the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
d. the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
e. nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
f. and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
g. a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
h. there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
i. mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
j. the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
k. if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion.
 In making the global comparison the sign is to be considered in the context in which it is used. Kitchin LJ made this point in Specsavers  FSR 19 at :
"In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer's mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context."
 The reference in sub-para.(d) of the citation from Specsavers  FSR 19 in  above to the assessment by the average consumer of the "visual, aural and conceptual similarities" derives from, amongst other places, the judgment of the CJEU in Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (C-342/97)  ECR I-3819;  FSR 77 at :
"In order to assess the degree of similarity between the marks concerned, the national court must determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed."
Sofa Workshop's online commercial strategy
Visual, aural and conceptual similarities; context of sale
Evidence of confusion
(1) People who contacted Sofa Workshop after seeing Sofaworks' advertisingThese were individuals who had either visited a Sofaworks store or seen its advertising and then gone to a Sofa Workshop store. Of the seven people referred to, on the face of the evidence there is an indication of relevant confusion in the mind of five.
(2) People who contacted Sofa Workshop after becoming aware of one or more of Sofaworks' productsThese people had either gone into one of Sofa Workshop's stores or contacted Sofa Workshop online with some knowledge of Sofaworks' products. On the face of the summaries and emails all nine had confused Sofa Workshop with Sofaworks.
(3) People who posted reviewsMr Staden exhibited pages from a review site maintained by Sofa Workshop for the purpose of inviting feedback from customers. Ten reviews suggest that the customer in question had confused Sofaworks with Sofa Workshop, generally by posting a complaint about a Sofaworks' product.
(4) Internet searches or website visitsSofa Workshop maintained reliance on all of its claimed instances of internet confusion. These took the form of individuals seeing Sofaworks' advertising and then searching for Sofa Workshop, or those who searched for 'Sofaworks' but clicked through to Sofa Workshop. A lot of time was spent analysing statistics from both sides of searches and website visits. Part of this was in order to identify trends as they appeared from prepared graphs and thus to draw inferences of confusion and to dispel the suggestion that Google adword purchasing by either side had neutralised the impact of all of this evidence. Some of the evidence was presented by Sofaworks for the opposite purpose – to show that adword purchasing had indeed been the real source of any apparent confusion. Taken as a whole, I did not find this internet-based evidence convincing. It was neutral.
(5) People who ordered goods from Sofaworks when trading as 'CSL'After Sofaworks changed its name from 'CSL', some people who had ordered products from CSL approached Sofa Workshop about the order, for example to complain about late delivery. There were seven such people, all of whom contacted Sofa Workshop by email. At least on the face of the emails there had been confusion between Sofa Workshop and Sofaworks caused by Sofaworks' new name.
(6) Job applicants who contacted the wrong retailerTwo people separately approached Sofaworks for work and thereafter contacted Sofa Workshop about the prospective job.
(7) People who observed that the parties' names were the same or too similarOne individual is recorded as pointing out to Sofa Workshop that it and Sofaworks had the same name. A second stated that that the retailers' names were too similar.
(1) Such was the level of (a) Sofaworks' turnover since it re-branded in January 2014 (£101 million) and (b) the footfall into Sofa Workshop's shops in a year (about 450,000 people) that for confusion to have occurred on a significant scale there would have to have been a large number of people confused.
(2) On the 'Contact Us' page of Sofa Workshop's website there is an invitation to email enquiries to email@example.com. Mr Staden explained that this is manned by a team of about six people who take hundreds of inquiries per week, all of them documented. Mr Baldwin pointed out that of all these inquiries, only a handful indicated confusion on the part of the public as between the parties' trading names.
Likelihood of confusion in real terms
The Average Consumer
" Mr Silverleaf also referred us to the discussion of the attributes of the average consumer in Interflora Inc v Marks & Spencer Plc ("Interflora III")  EWCA Civ 1403;  F.S.R. 10 at –. In that case it was argued on behalf of the defendant that the judge had been wrong to ask himself whether a "significant proportion of members of the public" would be confused. The average consumer, it was suggested, was either confused or he was not. In the course of dealing with that question the court approved the following propositions of materiality here:
(i) the average consumer in any context is a hypothetical person or "legal construct": a person who has been created to strike the right balance between various competing interests including, on the one hand, the need to protect consumers and, on the other hand, the promotion of free trade in an openly competitive market, and also to provide a standard, defined in EU law, which national courts may then apply.
(ii) the average consumer test is not a statistical test. The national court must exercise its own judgment, in accordance with the principle of proportionality and the principles explained by the Court of Justice, to determine the perceptions of the average consumer in any given case in light of all the relevant circumstances.
(iii) in a case concerning ordinary goods or services, the court may be able to put itself in the position of the average consumer without requiring evidence from consumers, still less expert evidence or a consumer survey. In such a case, the judge can make up his or her own mind about the particular issue he or she has to decide in the absence of evidence and using his or her own common sense and experience of the world."
" In relation to what the court described as the crucial question, namely whether the average consumer, as a hypothetical person, necessarily has a single reaction and so precludes a consideration of the perceptions of a proportion of the relevant public the court in Interflora  EWCA Civ 1403 identified the following propositions:
(i) the average consumer test provides the court with a perspective from which to assess the particular question it has to decide, for example whether a statement is liable to mislead purchasers.
(ii) a national court may be able to assess this question without the benefit of a survey or expert evidence.
(iii) a national court may nevertheless decide, in accordance with its own national law, that it is necessary to have recourse to an expert's opinion or a survey for the purpose of assisting it to decide whether the statement is misleading or not.
(iv) absent any provision of EU law dealing with the issue, it is then for the national court to determine, in accordance with its own national law, the percentage of consumers misled by the statement that, in its view, is sufficiently significant in order to justify banning its use."
(1) For the purpose of assessing whether a mark has acquired distinctive character within the meaning of art.3(3) of the Trade Mark Directive (European Parliament and Council Directive 89/104, later Directive 2008/95), the requirement of distinctive character is satisfied if at least a significant proportion of the relevant class of persons, because of the mark, identify the goods as originating from a particular undertaking (at ).
(2) The perception of the marks in the mind of the average consumer plays a decisive role in the global appreciation of the likelihood of confusion. This does not preclude the national court from having regard to the perceptions of a significant proportion of the relevant public in assessing either distinctiveness or alternatively a likelihood of confusion (at ).
(3) The average consumer provides a benchmark, for it is the presumed expectations of this person that are to be taken into account by the national court in assessing distinctiveness and whether a significant proportion of the relevant class of consumers identify the goods or services in issue as coming from a particular undertaking (at -).
(4) The issue of a trade mark's distinctiveness is intimately tied to the scope of protection to which it is entitled. It necessarily follows that the court must therefore have regard to the impact of the accused sign on the proportion of consumers to whom the trade mark is particularly distinctive (at ).
(5) The concept of the average consumer is not anything so formalistic as a mathematical average; it is instead a hypothetical person within the group of which the average member is part who represents a normative standard. In assessing whether a practice is deceptive from the perspective of the average consumer (for the purposes of the Unfair Commercial Practices Directive) a national court may have regard to the effect it has upon a significant number of persons to whom it is addressed (at ).
(6) In the context of whether advertisements enable the average consumer to tell that a service did not originate from the advertiser (the specific point at issue in Interflora), it is only the effect of the advertisement on consumers who are reasonably well-informed and reasonably observant that must be taken into account (at ).
(7) It makes no difference whether the question before the court is asked and answered from the perspective of the single hypothetical well-informed and reasonably observant consumer or whether that hypothetical person provides the benchmark or threshold for the purposes of identifying the population of consumers whose views are material. The CJEU has used the two interchangeably (at ).
" As we have seen, the average consumer does not stand alone for it is from the perspective of this person that the court must consider the particular issue it is called upon to determine. In deciding a question of infringement of a trade mark, and determining whether a sign has affected or is liable to affect one of the functions of the mark in a claim under art.5(1)(a) of the Directive (or art.9(1)(a) of the Regulation), whether there is a likelihood of confusion or association under art.5(1)(b) (or art.9(1)(b) ), or whether there is a link between the mark and the sign under art.5(2) (or art.9(1)(c) ), the national court is required to make a qualitative assessment. It follows that it must make that assessment from the perspective of the average consumer and in accordance with the guidance given by the Court of Justice. Of course the court must ultimately give a binary answer to the question before it, that is to say, in the case of art.5(1)(b) of the Directive, whether or not, as a result of the accused use, there exists a likelihood of confusion on the part of the public. But in light of the foregoing discussion we do not accept that a finding of infringement is precluded by a finding that many consumers, of whom the average consumer is representative, would not be confused. To the contrary, if, having regard to the perceptions and expectations of the average consumer, the court concludes that a significant proportion of the relevant public is likely to be confused such as to warrant the intervention of the court then we believe it may properly find infringement."
"In answering this question we consider the judge was entitled to have regard to the effect of the advertisements upon a significant section of the relevant class of consumers, and he was not barred from finding infringement by a determination that the majority of consumers were not confused."
"These functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising."
See also Google France Sarl v Louis Vuitton Malletier SA (Joined Cases C-236/08, C-237/08 and C-238/08)  RPC 19, at .
Conversion under art.112
1. The applicant for or proprietor of a Community trade mark may request the conversion of his Community trade mark application or Community trade mark into a national trade mark application:
(a) to the extent that the Community trade mark application is refused, withdrawn, or deemed to be withdrawn;
(b) to the extent that the Community trade mark ceases to have effect.
2. Conversion shall not take place:
(a) where the rights of the proprietor of the Community trade mark have been revoked on the grounds of non-use, unless in the Member State for which conversion is requested the Community trade mark has been put to use which would be considered to be genuine use under the laws of that Member State;
(b) for the purpose of protection in a Member State in which, in accordance with the decision of the Office or of the national court, grounds for refusal of registration or grounds for revocation or invalidity apply to the Community trade mark application or Community trade mark.
3. The national trade mark application resulting from the conversion of a Community trade mark application or a Community trade mark shall enjoy in respect of the Member State concerned the date of filing or the date of priority of that application or trade mark and, where appropriate, the seniority of a trade mark of that State claimed under Articles 34 or 35.
6. Where the Community trade mark application is refused by decision of the Office or where the Community trade mark ceases to have effect as a result of a decision of the Office or of a Community trade mark court, the request for conversion shall be filed within three months after the date on which that decision acquired the authority of a final decision.