It was thought that HHJ Hacon’s decision may be at odds with the CJEU’s earlier decision in Leno Merken.
A large amount of discussion was generated last year as a result of the IPEC’s decision in The Sofa Workshop Limited v Sofaworks Limited. In particular, questions were raised over whether HHJ Hacon was correct to revoke two CTMs owned by Sofa Workshop on the basis of non-use, despite Sofa Workshop’s marks having been used significantly throughout the UK (but nowhere else, aside from a single sale in Denmark). It was thought that HHJ Hacon’s decision may be at odds with the CJEU’s earlier decision in Leno Merken.
Mr Justice Arnold’s recent comments in the London Taxi case suggest that the Sofa Workshop decision is now under appeal. They also provide a hint that perhaps HHJ Hacon was too rigid in his assessment of non-use:
“[230] In The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC), [2015] ETMR 37 at [25] His Honour Judge Hacon interpreted Leno as establishing that “genuine use in the Community will in general require use in more than one Member State” but “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”. On this basis, he went on to hold at [33]-[40] that extensive use of the trade mark in the UK, and one sale in Denmark, was not sufficient to amount to genuine use in the Community. As I understand it, this decision is presently under appeal and it would therefore be inappropriate for me to comment on the merits of the decision. All I will say is that, while I find the thrust of Judge Hacon’s analysis of Leno persuasive, I would not myself express the applicable principles in terms of a general rule and an exception to that general rule. Rather, I would prefer to say that the assessment is a multi-factorial one which includes the geographical extent of the use.“
We will be keeping an eye on this appeal and will be sure to provide an update when the decision comes out.