A dispute concerning brand names between the DFS-owned The Sofa Workshop and Sofaworks (formerly CSL) has resolved today, an official High Court ruling finding in favour of The Sofa Workshop – meaning Sofaworks may be forced to change its brand name.
CSL rebranded itself as Sofaworks in December 2013. It is understood that the company first acquired the Sofaworks name in 1996, but did not attempt to register Sofaworks as a trademark until September 2013, when the bid was opposed. DFS bought the Sofa Workshop brand beforehand, in October 2013, and took action against Sofaworks on its behalf, culminating in a two-day hearing at the Intellectual Property and Enterprise Court.
“By comparison to Sofaworks, we’re a relatively small brand that has been operating since 1985,” comments CEO of The Sofa Workshop, Paul Staden. “We’ve invested a lot into creating a distinctive, quality brand that specialises in handcrafted furniture. We’re therefore pleased that the court has ruled in our favour and that we’ve been successful in protecting The Sofa Workshop brand from passing off by Sofaworks, the company formally known as CSL.
“Following a two-day hearing, the court held that Sofaworks’ use of its trade name constitutes a misrepresentation that is sufficient to cause material damage to Sofa Workshop’s goodwill. Accordingly, CSL/Sofaworks was found to be liable for passing off. This decision means that our company can continue to trade successfully without risk of potential confusion by customers due to the similar brand names."
A spokesperson from DFS adds: “We’re pleased that Sofa Workshop has been successful in their action against Sofaworks with regards to passing off. Sofa Workshop is a small, quality brand that has been established since 1985 and we’re happy the outcome allows the brand name to remain protected.”
Sofaworks has expressed dismay at the finding, yet remains "undeterred" at the outcome, and "dumbfounded" by the suggestion and that it had been passing itself off as Sofa Workshop. CEO and owner Jason Tyldesley comments: “It is not the name that our competitors need to fear, it is what we do differently and better for our customers which is why we are the fastest-growing retailer in the sector. This case will only fuel our resolve and, far from hesitate, we will now push forward with this name or the next, believing that it’s what’s inside that matters. We can reassure our customers, colleagues and suppliers that we won’t miss a beat and will continue our business as usual approach of bringing honesty and transparency to the sector – the DNA of our customer-focused strategy.
“That said, we are truly disappointed yet undeterred by today’s court decision and feel very let down. However, a name is just that – we are what we do, not what it says on our badge. We will not hesitate to continue to change this market for the good of the customer, standing for transparency and honesty of pricing, the removal of endless contrived promotional price offers, 'ends Sunday' deadlines, a commitment to remove commission hungry salespeople and pressure from the sofa shopping experience. Something our competitors rightly fear.
”Sofaworks versus DFS (masquerading as Sofa Workshop) has been a real case of David and Goliath, and whilst we are flattered at being seen as such a threat to DFS, this judgement has sadly gone in favour of the big boys with big pockets. For this judgement to state that we are passing off as Sofa Workshop, makes no sense to us. How could Sofaworks ever benefit from pretending to be a smaller retailer – especially one operating in boutique upmarket stores, a stark contrast to our own retail park-based superstores? Why would a salmon pretend to be a stickleback in order to swim up the river?"
Sofaworks awaits the court’s decision with regards to timescales and will confirm its intentions at that point.