A recent Court of Appeal decision has highlighted how important it is that registered trade mark owners promptly issue and serve infringement proceedings against infringers, or they risk losing the right to do so.
In the case of Combe International LLC & Anor -v- Dr August Wolff GmbH & Co KG & Anor [2022] EWCA Civ 1562, the claimants brought registered trade mark infringement proceedings against the defendants, asserting that their use of the marks VAGISAN and DR WOLFF’S VAGISAN (in respect of female intimate healthcare products) infringed their registered trade mark rights in respect of the mark VAGISIL.
At first instance, the Court held that the defendant’s use of both marks constituted infringement.
The defendants appealed on three grounds. The only one with which this article is concerned was their contention that they had a defence to infringement, pursuant to s48(1) Trade Marks Act 1994.
“Where the proprietor of an earlier trade mark or other earlier right has acquiesced for a continuous period of five years in the use of a registered trade mark in the United Kingdom, being aware of that use, there shall cease to be any entitlement on the basis of that earlier trade mark or other right
(a) to apply for a declaration that the registration of the later trade mark is invalid, or
(b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used,
unless the registration of the later trade mark was applied for in bad faith.”
The defendants asserted that the claimants acquiesced in the use in the UK by the first defendant of its registered trade mark for the mark VAGISAN for more than 5 years.
It was common ground that the claimants had become aware of the registration and use in the UK of the mark VAGISAN by late January 2014. However, they did not issue formal legal proceedings, asserting registered trade mark infringement, until well over 5 years after that date.
The Court of Appeal dismissed the defendants contention that they had a defence to infringement pursuant to s48(1).
This was due to the fact that the claimants were not aware of the use of VAGISAN for a long period during 2015 and 2016, despite keeping a watch for such use. In those circumstances, it was reasonable for the claimants to assume that VAGISAN had been withdrawn from the UK market. That being so, they did not acquiesce in the use that did, in fact, occur during that period.
But what was of greater interest was the Court of Appeal holding that a registered trade mark owner, or its legal advisers, sending a cease and desist letter, or other warning letter, to an infringer will not suffice to interrupt a period of acquiescence. Neither will taking administrative proceedings before the UKIPO to have the alleged infringer’s registered trade mark invalidated. Only bringing legal proceedings for registered trade mark infringement will suffice to stop time running.
If a registered trade mark owner wants to avoid the risk of an action for infringement being defeated on the basis of a s48(1) acquiescence defence then they need to bring legal proceedings against the infringer.
Merely sending a cease and desist letter, or other warning letter, will not suffice. Neither will taking administrative proceedings before the UKIPO to have the alleged infringer’s registered trade mark invalidated.
For more information please contact Carl Steele.
