5 Years’ Acquiescence – do not leave it too late! Recent case law developments and a reminder of the relevant tests

UK and EU trade mark law has and continues to provide a statutory defence against infringement and registry based cancellation actions, where the owner of the earlier trade mark is deemed to have had knowledge of the later trade mark for a period of 5 years following its registration and use without initiating proceedings against that later trade mark (“5 Years’ Acquiescence”).

Whilst the case law in this area is relatively consistent, there are a number of evidential questions of particular importance that have surfaced in recent decisions and persuasive opinions. In particular, what constitutes knowledge of the later trade mark to start the clock running? What steps must the earlier trade mark owner take in order to stop the clock running? These questions are of vital importance, in order to mitigate the risk of facing a perpetual defence of 5 Years’ Acquiescence. Of course, if the shoe is on the other foot, then these are equally important considerations in order to understand when a later trade mark owner can rely on the defence of 5 Years’ Acquiescence.

Recent case law - when does the clock stop running?

In a recent opinion of the Advocate General in HEITEC AG v HEITECH Promotion GmbH (C-466/20) EU:C:2022:25 (13 January 2022), further clarity was provided on the question of when the clock stops running. As a preliminary observation, the AG affirmed previous case law that acquiescence could only be excluded by commencing judicial or administrative proceedings against the later mark. Indeed, the AG went as far to opine that even if service (rather than issuing) of the claim on the defendant fell after 5 Years’ Acquiescence, such steps may not be sufficient to stop the clock running. Of course, in this scenario, the relevant authority would consider whether the defendant purposely attempted to evade service. However, the AG appears to be tightening, rather than loosening the rules on when the clock is deemed to stop running, even if it is clear that proceedings have been filed with a competent authority prior to the end of the relevant 5-year period.

Reminder of existing case law: When does the clock start to run – what is considered as knowledge?

In light of this recent decision, it would therefore be helpful to set out the established tests for 5 Years’ Acquiescence. In particular, and as referenced in the introduction, when does the 5-year period begin to run? This is obviously fundamental to the question of when the 5-year period ultimately expires. In a General Court decision (T-77/15, Sky/Skytec) Tronios Group registered the EU trade mark SKYTEC. The owner of the earlier EU trade mark for SKY (British Sky Broadcasting Group) filed an application for invalidity.

Tronios relied on the defence of 5 Years’ Acquiescence – this argument was rejected by the cancellation division, the Board of Appeal and the General Court. Tronios submitted evidence of use of its SKYTEC mark within the EU for a number of years following its registration, claiming BSkyB would have been aware of its commercial use of its trade mark. However, the evidence was deemed as suggestive at best as it did not constitute evidence of actual knowledge. Interestingly, the evidence included a reference to a previous action by BSkyB against the same mark in South Africa, but such evidence was also rejected as it did not constitute actual knowledge of the registration and use within the jurisdiction of the EU. Indeed, this approach has been applied in other cases before the General Court, where evidence by way of an infringement case in one jurisdiction has been submitted to demonstrate alleged knowledge in a different territory. As in the case of SKYTEC, the infringement proceedings were not deemed to constitute actual knowledge of registration and use within the jurisdiction in which the trade mark proceedings relate, notwithstanding the potentially close economic links (GC - T-150/17).

As such, trade mark owners should remember that implied/constructive knowledge is not enough. Instead, for 5 Years’ Acquiescence to apply, it is necessary to supply actual evidence that the earlier trade mark owner knew about the registration and use within the relevant jurisdiction. We suggest this requires some form of documentation which creates a direct link between the earlier rights holder and the existence of the later trade mark. An obvious example would be correspondence between legal representatives citing the trade mark in question.

Conclusion

In summary and in conclusion, the prerequisites in a defence of 5 Years’ Acquiescence are as follows: 1) the later trade mark must be registered, 2) the application for its registration must have been made by its proprietor in good faith, 3) the later trade mark must be used in the territory where the earlier trade mark is protected, 4) knowledge by the proprietor of the earlier trade mark that the later trade mark has been registered and used after its registration for the goods and services within the specification, and 5) evidence of knowledge requires actual evidence that the earlier trade mark owner knew about the registration and use within the relevant jurisdiction. Constructive / implied evidence of knowledge is not enough.

As it currently stands the UK position on 5 Years’ Acquiescence remains consistent with EU case law.

For further information please contact CMS IP Associates Paul Sweeden and Melissa Li Trenta.