The Court of Appeal (England and Wales) has clarified the application of the acquiescence defence in another case which highlights the importance of not delaying in bringing infringement actions. 

What has happened? 

• UK and EU trade mark law provides 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 (see Acquiescence: a quick guide). 
• The Court of Appeal (England and Wales) (CA) has clarified the circumstances in which the acquiescence period can be stopped in the UK, holding that a mere application to invalidate the later trade mark registration is not sufficient. Rather, there must be a claim directed at the actual infringing use of the later mark. But, if the earlier trade mark owner genuinely and reasonably believes the infringing use has ceased, then the five-year period should stop.
• In this case, the defendants, Wolff, argued that they had a defence to a claim of trade mark infringement based on the fact that the Claimant's, Combe, had acquiesced for a continuous period of five years to Wolff's use of the infringing mark in the UK. While Combe had applied to invalidate Wolff's trade mark registration during this five-year period, they had done nothing substantive about Wolff's infringing use. 
• The CA held that Combe's actions were not sufficient to stop the five-year acquiescence period: a mere application to invalidate Wolff's registration was not sufficient. However, Combe was saved because it genuinely and reasonably believed that Wolff's infringing use had ceased for a significant period of time during the relevant five-year period. They therefore did not have actual awareness of infringing use for a continuous five-year period. There was no finding of acquiescence.
• The case is another in a growing list reminding brand owners of the importance of taking decisive action against potential infringers where the allegedly infringing mark is registered. Action to stop the infringing use should be the focus (alongside any challenges to address the state of the trade mark register). More specifically, the CA suggested (obiter) that this requires the earlier trade mark owner to take steps to bring about a legally binding solution through an administrative or court action for infringement. 

Want to know more? 

Background

Combe own UK trade mark registrations for VAGISIL in relation to female intimate healthcare products, dating back to May 1975. Combe claimed that Wolff were infringing Combe's rights by Wolff's use of the later registered mark DR WOLFF'S VAGISAN. 

In early 2014, Combe discovered the Vagisan products in a small number of pharmacies in the UK. Combe began to monitor Vagisan's presence and expressed their concerns to Wolff. After various exchanges between the parties, negotiations of coexistence broke down in late 2015. Throughout 2015 and 2016, Combe believed that Wolff was not actively selling their Vagisan products in the UK, as they had not detected any sales through their monitoring techniques. In late 2016, Vagisan was relaunched in the UK by a major television advertising campaign. Vagisil's sales spiked during this time, indicating that there was confusion between the products.

In December 2017, Combe commenced an action to invalidate Wolff's EUTM registration, alleging there was a likelihood of confusion between it and the earlier VAGISIL registrations. In September 2019, the EU IP Office declared Wolff's EU registration invalid. The next month, Combe issued a claim against Wolff at the High Court (England and Wales) (HC), alleging trade mark infringement. 

At the HC, Combe were successful, with Wolff being found to have infringed Combe's trade mark registrations. An injunction was ordered, restraining Wolff's use. Wolff subsequently appealed to the CA, the first ground being that they had a defence to infringement under section 48(1) of the UK Trade Marks Act 1994, as Combe had acquiesced for a continuous five-year period to Wolff's use in the UK.

Section 48(1) 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:

• to apply for a declaration that the registration of the later trade mark is invalid; or
• to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used, unless the registration of the later trade mark was applied for in bad faith.

The CA considered three questions, considered below.

Had Combe ended the acquiescence period by filing an invalidity action? 

The CA held that an invalidity action does not stop the five-year acquiescence period from running. Even when viewed in context, an invalidity action alone cannot interrupt the five-year period. It is only directed at the existence of the later trade mark registration, not its use. Acquiescence relates to use, not to registration. In this case, Combe had been completely passive about Wolff's infringement until late 2019 and so had not stopped the acquiescence period. 

There was support (obiter) for the approach taken by the ECJ in the recent Heitec v Heitech case (discussed here) that, where a warning letter about infringement is unsuccessful, the owner of the earlier mark must take steps to bring about a legal binding solution through an administrative or court action for infringement. The CA also commented that a customs action aimed at infringing goods might be sufficient.

Was Combe aware of Wolff's use for the full five-year acquiescence period?

The CA held that it is not correct to say that, once the owner of the earlier mark becomes aware of the infringing use, that awareness continues forever more. Where the owner of the earlier mark genuinely and reasonably believed that the use of the later mark has ceased for a period of time, there would be no acquiescence during that time. 

Here, Combe genuinely and reasonably believed Wolff's use had stopped for a significant period during the relevant five-year period. Therefore, it had not acquiesced for a continuous five-year period.  

Had Wolff's use of the infringing mark been continuous anyway?

The CA found that Wolff's infringing use did not need to be strictly continuous throughout the five-year period but that such use should be "continued". This is a fact-specific enquiry and depends on the nature of the goods/services in question. For example, goods that are more expensive or specialised might be bought less frequently. 

The CA also held that, for there to be use of the later mark within the meaning of the acquiescence provisions, the use must be infringing use. It need not meet the threshold for genuine use sufficient to save a trade mark registration from revocation. It added that the scale of use is, however, relevant to whether use has been continuous/continued and whether the earlier trade mark owner is aware of such use. 

In view of the fact that Combe genuinely and reasonably believed that Wolff's use had ceased in the UK for a period of two years, it could not have acquiesced to that use. Wolff's appeal was therefore dismissed. Wolff's use was infringing, and they did not have an acquiescence defence. 

This article was co-authored by Senior Brand Protection Paralegal, Elena Glengarry.