Trademark acquiescence: Important UK divergence from EU case law 

After new case law from the EU courts stopped being binding on UK courts at the end of the Brexit Transition Period, it was only a matter of time before divergent rulings began to emerge. Luke Portnow discusses a recent ruling on trademark acquiescence and what it means for trademark enforcement strategies in the UK. 

An important decision handed down by the UK Court of Appeal in November 2023 indicates the judiciary’s willingness to diverge from retained EU case law – in this case in relation to trademark acquiescence.   

The Brexit Transition Period – a reminder 

At the end of the Brexit Transition Period (31 December 2020), the UK Retained EU Law Bill entered into force to provide legal continuity and certainty. This also meant that the principle of the supremacy of EU law applied to the interpretation of retained EU law. 

The Retained EU Law (Revocation and Reform) Act 2023 then received Royal Assent in June 2023.  This allowed the UK government to revoke or modify retained EU laws (now to be interpreted under UK law), with some 600 pieces of EU-derived legislation revoked at the end of 2023 (with almost 3,000 still under review).   

At the same time (from 1 January 2024), the principle of supremacy of EU law ended in UK law.   

Trademark acquiescence and divergence from EU case law 

EU (and UK) trademark law provides that a trademark owner could lose the right to object to the use of a trademark that has been registered later if they knowingly acquiesced to the use of that trademark for five continuous years.  

As background to this decision, the Claimant had become aware of the Defendants' logo in July 2014 but did not send a letter before action alleging infringement until 2019. Applying the principles laid down by the Court of Justice of the EU (CJEU) in Budvar, the judge at first instance ruled the 2019 letter was sent before the expiry of the five-year period required for (statutory) trademark acquiescence, and the defence therefore failed. 

This was then appealed on two points: 

• Whether the Claimant needs to know about both the use and registration of the later trademark for the statutory acquiescence period to start running; and 
• For EU designations of international registrations, whether the period of trademark acquiescence ran from the date that the defendants' marks were registered at WIPO (June 2015), or from the date of grant of protection at the EUIPO (25 May 2016 and 15 June 2016). 

Departing from the Budvar decision, Lord Justice Arnold in the Court of Appeal held that knowledge of use of the later trademark was all that was required to start the five-year period running, provided that the later mark has been registered for five years. 

The appeal was still dismissed because the answer to the second question was that the date for calculating the acquiescence was the date on which the EU international registrations were accepted by the EUIPO (or from the second republication date by the EUIPO) and not the WIPO registration date. This meant the claim was issued within (under) a full five years' statutory acquiescence. 

This is the first time a senior UK court has departed from retained EU case law and, most importantly, bequeaths a new test for statutory trademark acquiescence in the UK.  

Need to know: Trademark acquiescence in the UK  

As a result of this ruling, an earlier rights holder now only needs be aware of the use of the later mark to start the clock on the five-year period (to be evidenced by the Defendant).   

The lesson from this: it may now become very easy to inadvertently acquiesce.   

The main takeaways are two-fold:  

• Be cautious and plan any approach to a third party you believe is infringing your rights, thinking about the future and being mindful of any applications or registrations they may hold (and the relevant dates of these).  
• Perhaps most tangible, linked to everyday practice, is that an automated pre-action letter could easily become evidence of knowledge of use and as such start the clock ticking (so firing a letter out, and not following up with any formal action, may well lead to estoppel).    

Enforcement in the UK, especially with statutory Unjustified Threats provisions, is often difficult.  Even more care is perhaps now needed to ensure letters sent to third parties do not block IP owners from taking action later down the line. Particular care also needs to be taken in relation to the type and wording of pre-opposition letters (or ‘cease and desist’ letters as they are often called outside of the UK).  

For more information and tailored support on trademark acquiescence in the UK and EU, speak to your Novagraaf attorney or contact us below.  

Luke Portnow is a Chartered UK Trademark Attorney at Novagraaf in London.