There have been a number of trade mark decisions in the English Courts on the issue of acquiescence, most recently the Combe International and anor v Dr Wolff and anor [2021] EWHC 3347 (Ch). That case considered the law as it then stood, including a look at the CJEU decision in Case C-482/09 (Budejovicky Budvar v Anheuser- Busch), as well as Arnold J's decision in W3 v easyGroup [2018] EWHC 7 (Ch). In the latter, only a letter before action with draft Particulars of Infringement had been sent, and it was questioned whether actual proceedings of some sort or another needed to have been brought. In W3 it was not necessary to answer that, although Arnold J considered that if he had to decide, he would have referred the matter to the CJEU. It likewise did not affect the decision in Combe International as there clearly were proceedings brought in the EUIPO within the 5 year time period.
However, it does look as if we will finally get an answer to this question. In an opinion handed down 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) has indicated that the following should be the answers
(1) Article 9(1) and (2) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks and Article 54(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 and serious intention that the acquiescence be terminated, by the proprietor of the earlier rights instituting judicial or administrative proceedings shall, if expressed within a period of five years from the proprietor's knowledge of the use of the later trade mark, be liable to terminate the time limit for limitation in consequence of acquiescence.
(2) Where legal action is brought by the proprietor of the earlier trade mark, the date of the bringing of that action should, in principle, be taken as the date of interruption of the five-year limitation period as provided for in Article 9(1) and (2) of Directive 2008/95 and in Article 54(1) and (2) and Article 111(2) of Regulation No 207/2009. Where the expiry of that time limit occurs between the bringing of the action and its service on the defendant, it will be for the relevant court to assess whether or not there has been a delay in informing the defendant and, if so, whether that delay can be attributed to the conduct of the defendant during the proceedings. In such a case, the relevant court will still have to examine whether such conduct is liable to call into question the seriousness of the action brought before it and will have to draw all the necessary conclusions with regard to the calculation of the period of limitation in consequence of 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 time when limitation in consequence of acquiescence is established, the proprietor of the earlier trade mark loses all its rights connected with the precedence of its trade mark vis-à-vis the proprietor of the later trade mark the use of which it has tolerated and that, consequently, the limitation in consequence of acquiescence within the meaning of those provisions must be understood as encompassing not only the prohibitory injunction but also the ancillary claims based on the right to the earlier mark.
It has to be said reading the brief facts given by the A-G that the proprietor and/or their lawyers, did not cover themselves in glory by seeking to initiate proceedings. They seem to have messed up procedurally such that by the time proceedings were finally begun, it was outside the 5 year period. Although the first instance court found in the proprietor's favour, the Bundesgerichtshof stayed the proceedings and referred the case. Had this been litigated in the English Courts, I have little doubt that as well as arguing acquiescence, there would also have been a defence of honest concurrent use.
It will be interesting to see if the CJEU follows the A-G's opinion.
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