The Authors' Take - Preclusion Due To Tolerance: Conditions For Applying The Acquiescence Rule In Trade Mark Law

Preclusion Due To Tolerance: Conditions For Applying The Acquiescence Rule In Trade Mark Law

by Michal Bohaczewski

The article analyses a rule of the EU trade mark law referred to by the legislature as ‘acquiescence’. The provisions on acquiescence provide for a period of preclusion for filing an invalidation or infringement action against a later registered trade mark which has been used on the market, provided that the proprietor of the earlier right tolerated that use for 5 successive years. 

The study first examines the prerequisites for the commencement of the period of preclusion resulting from the jurisprudence of the Court of Justice of the EU. In particular, the author refers to the requirement of knowledge by the proprietor of the earlier trade mark of the use of the later mark which, in some cases, in the absence of evidence of direct knowledge, may be deduced from the circumstances of the case. 

The article further analyses the conditions which need to be fulfilled for the period of preclusion to expire. The author raises the issue of the form in which the proprietor of the earlier right should oppose the use of the later trade mark in order to exclude his acquiescence. This matter of major practical importance is currently subject to a question referred to the Court of Justice for a preliminary ruling (C-466/20). 

The study also examines the relationship between the preclusion due to acquiescence and the ‘peaceful coexistence’ of the trade marks as a factor to be taken into account in the assessment of the likelihood of confusion between the signs, since prima facie the scopes of application of both rules may seem to overlap. The author concludes however that in reality there is little room for an overlapping between them.

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]