When have you ‘acquiesced’ in a later trademark?

If a proprietor of a trade mark is aware of the use of a later possibly infringing trade mark but takes no action, he loses the right to take action against it after 5 years. The earlier trade mark holder will then have ‘acquiesced’ in the later trade mark and will have to bear co-existence with it. Given it’s very important consequences, it will come as no surprise that acquiescence is heavily litigated on. On 19 May 2022 the European Court of Justice provided helpful guidance on this tricky concept.

The case that went up to the European Court of Justice (“ECJ”) involved a dispute between Heitec AG and Heitech Promotion GmbH and related to the use of the word element ‘heitech’ by the latter. Although Heitech AG had filed an appeal before the expiry of the period of limitation, this appeal was only served (“betekenen”, “signifier”) on Heitech Promotion GmbH after five years had elapsed. The question was whether filing the action without serving it, was sufficient for avoiding acquiescence.

The ECJ started with clearly stating that an act, such as a warning letter, by which the proprietor of an earlier mark opposes the use of a later mark without taking the necessary steps to obtain a legally binding solution does not stop acquiescence and, consequently, does not interrupt the period of limitation. Deciding otherwise would allow the proprietor of the earlier mark to circumvent acquiescence by repeatedly sending a warning letter approximately every five years.

Furthermore acquiescence may not be prevented by bringing a court action without satisfying the requirements for service (“betekening”, “signification”) due to a lack of diligence on the part of the earlier trademark holder, even if rectified.

Finally, where the proprietor of an earlier trade mark has acquiesced and is thus time-barred from seeking a declaration of invalidity of a later mark and from opposing the use of that mark, he is also time-barred from bringing ancillary or related claims, such as claims for damages, the provision of information or the destruction of goods.

The ECJ has thus taken a very strict stance on what is to be considered as “acquiescence” and its consequences. Needless to say that it is of theutmost importance for every trade mark holder not to wait too long to start proceedings against possible infringers, at the risk of being time barred if action is not timely taken. As for many things, time is of the essence.

CAPE IP Law

6 July 2022