Trademark rulings by the English courts on the issue of acquiescence – Intellectual Property


UK: Trademark rulings in the English courts on the issue of acquiescence

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There have been a number of trade mark decisions in English courts on the issue of acquiescence, most recently the Combe International and anor versus Dr Wolff and anor [2021] EWHC 3347 (Ch). This case examined the law as it was then in force, including a look at the CJEU’s decision in case C-482/09 (Budejovicky Budvar vs. Anheuser-Busch), as well as Arnold J’s decision in W3 vs easyGroup
[2018] EWHC 7 (Ch). In the latter, only a pre-action letter with draft details of the infringement had been sent, and there was some discussion as to whether actual proceedings of one kind or another should be initiated. In W3 there was no need to answer this, although Arnold J felt that if he had to decide, he would have gone to the CJEU. Nor did it affect the decision in Combe International given that there have clearly been proceedings initiated with the EUIPO within the 5-year period.

However, it looks like we will finally get an answer to this question. In an opinion delivered at the end of last week, Advocate General Pitruzella in the case HEITEC AG v Heitech Promotion GmbH C-466/20 (a referral from the Bundesgerichtshof) indicated that the following should be the answers

(1) Article 9, paragraphs 1 and 2, of Directive 2008/95/EC of the European Parliament and of the Council of October 22, 2008 on the approximation of the laws of the Member States relating to trade marks and Article 54, paragraph 1, and (2) and Article 111(2) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark must be interpreted as meaning that only the unequivocal expression of a clear intention and serious to put an end to the tolerance, by the holder of the prior rights acting in court or in court, is likely, if it is expressed within a period of five years from the knowledge by the holder of the use of the later mark, to end the limitation period by acquiescence.

(2) Where legal action is brought by the proprietor of the earlier mark, the date on which that action is brought must, in principle, be considered as the date on which the five-year limitation period provided for in 9(1) and (2) of Directive 2008/95 and Article 54(1) and (2) and Article 111(2) of Regulation No 207/2009. When the expiry of this period occurs between the introduction of the action and its service on the defendant, it will be for the competent court to assess whether or not there has been a delay in informing the defendant and, in if so, whether this delay can be attributed to the behavior of the defendant during the proceedings. In such a case, the competent court will still have to examine whether such behavior is likely to call into question the seriousness of the action brought before it and will have to draw all the necessary consequences as regards the calculation of the limitation period as a result of the acquiescence.

(3) Article 9(1) and (2) of Directive 2008/95 and Article 54(1) and (2) and Article 111(2) of Regulation No 207/2009 must be interpreted as meaning that, from the moment when prescription by acquiescence is established, the proprietor of the earlier mark loses all his rights linked to the anteriority of his mark vis-à-vis the proprietor of the later mark whose use he has tolerated and that, consequently, prescription by acquiescence within the meaning of these provisions must be understood as encompassing not only the injunction of prohibition but also the ancillary claims derived from the right to the earlier mark.

It is clear from reading the brief facts reported by the AG that the owner and / or his lawyers, did not cover themselves with glory by seeking to initiate proceedings. They seem to have messed up the procedure so that by the time the procedure finally started it was outside the 5 year window. Although the court of first instance ruled in favor of the owner, the Bundesgerichtshof suspended the proceedings and dismissed the case. Had this been argued in the English courts, I have little doubt that in addition to asserting acquiescence, there would also have been an honest concurrent use defence.

It will be interesting to see if the CJEU follows the opinion of the AG.

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