In February 2022 we drew attention to the High Court ruling in Combe -v- Wolff involving the Vagisil and Vagisan brands. Our article is here. In particular, we highlighted the High Court’s views on what a claimant needs to do to prevent a defendant running a successful defence that the claimant has acquiesced in the defendant’s use of the mark. In this case, the High Court found that correspondence from the Claimant to the Defendant objecting to use of the mark was enough to demonstrate that the Claimant was not acquiescing to the Defendant’s use of that mark. Alternatively, bringing a cancellation action against the Defendant’s later mark would also be enough to demonstrate that the Claimant was not consenting to the use of the mark by the Defendant.
Court of Appeal decision
The Court of Appeal has reconsidered the position. It has disagreed with the first instance Judge about what is necessary to prevent a defendant running a successful acquiescence defence. The Court of Appeal has decided that it is not enough to bring a cancellation action against the defendant’s later mark or, in the alternative, to simply object in correspondence to the defendant’s use of its brand. What is necessary is nothing short of (at least) pre-action correspondence objecting to the use of the brand closely followed by court proceedings if the use does not stop.
A new threshold
This sets a very clear threshold for claimants to meet if they want to avoid the risk of facing an acquiescence defence. Simply contacting the defendant to complain will not be enough and nor will seeking to invalidate the defendant’s trade mark. This brings the position under English law into line with the decision reached by the Court of Justice of the European Union in its ruling last year in the Heitec case.
Acquiescence requires knowledge
In spite of finding that the Claimant had not done enough to defeat the acquiescence defence, the Court of Appeal still found for the Claimant. This was because the Claimant had legitimately believed the Defendant had stopped using the brand once a complaint was made. In other words, there could be no acquiescence for the requisite five-year period because acquiescence assumes the Claimant knows that the Defendant is continuing to use the mark.
The Court of Appeal decision can be found here.
This publication is a general summary of the law as at the date of publication. It should not replace legal advice tailored to your specific circumstances.
© Farrer & Co LLP, March 2023