1 July 2022
Brand owners need to be aware of the acquiescence provisions and act decisively against potential infringers so that they do not lose their rights to take action.
UK and EU trade mark law provide that a trade mark owner can – in certain circumstances – lose the right to invalidate or object to the use of a later registered trade mark. This occurs if the owner of the earlier mark has knowingly acquiesced to the use of the later registered mark for five continuous years. UK law on acquiescence is currently derived from (and largely aligned with) EU law.
In the UK, the provision applies to the owners of earlier trade marks and other earlier rights (such as those under the law of passing off). While the UK provision is stated to apply to the owners of other earlier rights, it is not clear how this provision sits with the statement in section 2(2) of the Trade Marks Act 1994 that the Act does not affect the law of passing off. However, the later mark (ie the allegedly infringing mark) must be registered. The owner of an earlier trade mark or other earlier right can only acquiesce to the use of a later "registered" mark. If the later mark is not registered, there can be no acquiescence. The position differs slightly across EU member states and for EUTMs.
UK trade mark law provides that, where the owner of an earlier trade mark or other earlier right has acquiesced for a continuous period of five years in the use of a registered trade mark in the UK, being aware of that use, there shall cease to be any entitlement on the basis of that earlier trade mark or other right:
The quid pro quo is that, where this provision applies, the owner of the later trade mark is not entitled to oppose the use of the earlier trade mark or the exploitation of the earlier right, notwithstanding that the earlier trade mark or right may no longer be invoked against the later trade mark.
The five-year period starts to run when the owner of the earlier mark or right is aware (or can reasonably be presumed to be aware) of the "use" of the later registered mark. This date must necessarily be after the date the later mark was registered.
Awareness has generally been interpreted to mean actual knowledge (not constructive or implied knowledge) (T-150/17 and C-381/12 P). This could be by both owners exhibiting goods at the same event or corresponding about the use of the marks (3971 C). The mere use of the later mark on the market is usually insufficient to establish actual awareness, as is the fact that there are infringement proceedings in other jurisdictions (absent other evidence of actual knowledge) (T-150/17). Similarly, awareness of the use of other marks similar to the contested mark is not sufficient to establish actual awareness of the use of the contested mark (T-150/17).
The EU IP Office Guidelines suggest that the owner of the earlier mark or right does not necessarily have to be aware that the later mark is registered. What is required is that the later mark has, in fact, been used for five years while registered and that the owner of the earlier mark or right has been aware of that use (R 1299/2007-2 but contrast with the ruling in C 482/09). The acquiescence period must necessarily expire at least five years or more after the date the later mark was registered.
Commencing administrative or court proceedings is sufficient to stop the clock from running (C-482/09). This would be by way of an infringement claim in respect of the use of the later registered mark (an invalidity action presumably being insufficient if unsuccessful). A recent ECJ ruling (not binding on the UK) held that the sending of a warning letter (if unsuccessful) does not stop the acquiescence period (C 466/20 – see our article here).
If a warning letter is successful (eg because it results in a co-existence agreement), then the acquiescence period would stop. However, if that co-existence agreement is subsequently breached and ceases to have effect, then a new five year period would commence (assuming the owner of the earlier mark or right is aware of such use) (R 267/2014-2) – acquiescence has to be for five successive years.