The Court of Appeal has just given a decision in a dispute between two companies which have coexisted in the United Kingdom for over five years using the trade mark ICE.

Background

Both companies have trade mark registrations in the UK. The claimant’s registration was filed after the defendant’s, but the claimant had been using its trade mark in the UK since a much earlier date than the defendant. The claimant, as owner of the earlier rights, brought proceedings to have the defendant’s trade mark registration declared invalid and to stop it using its trade mark.

Acquiescence

UK and European trade mark law contains an important exception to the monopoly granted to the owners of earlier trade mark rights, through a principle known as acquiescence. If the owner of an earlier trade mark has, for a continuous period of five years, knowingly tolerated the use of a registered trade mark, they will (unless there was bad faith in registering the later trade mark) lose their entitlement to:

1. apply for a declaration that the registration of the later trade mark is invalid; and
2. oppose the use of the later trade mark for the goods or services in relation to which it has been used.

The judgment

Until recently, it was thought that the owner of the earlier trade mark needed to know of both the use and the registration of the later trade mark for acquiescence to apply, and this was held to be the case by the judge in the first instance decision from which the appeal was made: the claimant was found not to have acquiesced, being aware only of the use of the defendant’s trade mark. However, the Court of Appeal chose to depart from previous EU law, holding that it was not necessary for the owner of the earlier trade mark to know of the registration of the later trade mark for there to have been acquiescence. Despite having earlier rights, the claimant was therefore unable to cancel or oppose the use of the defendant’s mark.

Comment

This decision clearly puts the onus on trade mark owners to monitor trade mark applications and to oppose any trade marks which conflict with their rights. It is vital that any competitor using an identical or similar trade mark be prevented from obtaining a registration of it, to prevent a situation eventually developing where the owner of the earlier trade mark is unable to do anything about the use and registration of the later trade mark.

If you have a question about this decision please contact one of our trade mark attorneys.