On the defendants’ appeal—

Held, appeal dismissed. (1) The bringing by the proprietor of the earlier trade mark of an EUIPO cancellation action in respect of the later trade mark was not sufficient to preclude acquiescence by the proprietor of the earlier trade mark in the use of the later trade mark. The acquiescence had to be in respect of the use of the later trade mark. Acquiescence in the registration of a later trade mark which was not being used did not give rise to a defence under section 48(1). A declaration that the registration of the later trade mark was invalid had no impact at all on the use of that trade mark: the proprietor of the later trade mark remained free to continue to use it. If the proprietor of the earlier trade mark wished to prevent use of the later trade mark, it had to take action to oppose that use, that was to say, action to enforce the rights conferred by the earlier trade mark to prevent the use by other parties of conflicting signs ie infringing use. The claimants were wrong to suggest that section 48(1) only applied to later trade marks which were registered and not to unregistered trade marks. It was not the case that an application for a declaration of invalidity was an attack upon the existence of the registration which founded the defence, and therefore that had to suffice to preclude acquiescence in the use of the earlier trade mark. The defence was founded upon acquiescence in use, not acquiescence in registration. A claim for a declaration of invalidity constituted action to oppose the registration of the later trade mark, but it did not constitute action to oppose the use of the later trade mark. It followed that the cancellation action had no effect at all on the defendants’ continued use of the European trade mark. The only way in which the claimants were able to force the first defendant to stop using the European trade mark in the UK was by bringing the present infringement proceedings. Furthermore, context was incapable of turning a cancellation action into something that amounted to opposing use of a later trade mark. Even serious, detailed and credible threats of infringement proceedings were not enough to preclude acquiescence unless they were followed by an administrative or court action to restrain infringement (paras 57–64, 73–75, 125, 126, 127).

(2) The use of the later trade mark did not have to be continuous throughout the five year period, since such a requirement would be unworkable. On the other hand, it could not be sufficient for there to be use for a short period of time, say one week, at the beginning of the five year period in question. There had to be continued, but not necessarily continuous, use of the later trade mark throughout the five year period. What amounted to continued use for this purpose would be a fact-sensitive question which depended on the nature of the goods or services and on the characteristics of the average consumer of those goods or services. As for the level of use required, it could not be the right test to say that the use had to amount to genuine use such as would defeat a claim for revocation of the later trade mark on the ground of non-use. All that was required was use which infringed the earlier trade mark. That was not to say that the scale of use was irrelevant. On the contrary, it might be relevant firstly to the question of whether there had been continued use of the later trade mark for five years. The acid test was that there had to be use for five years which a vigilant trade mark proprietor could be expected to oppose. Secondly, it might be relevant to the question of whether the proprietor of the earlier trade mark was aware of the use. It followed that the defendants had in fact made continuous infringing use of the European trade mark in the UK throughout the five years commencing in late January 2014; but in any event the first defendant certainly made continued use of the European trade mark at a level which was more than sufficient for the purpose of section 48(1) (paras 77–83, 89, 126, 127).

(3) Section 48(1) was explicit that the proprietor of the earlier trade mark had to be aware of the use of the later trade mark for five years. If the proprietor was not aware of the use for a significant part of that period, it could not be said to have acquiesced in that use or knowingly tolerated it. It was incorrect to suggest that, once the proprietor of the earlier trade mark became aware of the use of the later trade mark, then it would continue to be aware of such use if the use continued. Acquiescence or toleration required continued awareness of the use. That did not mean that the proprietor could say that it had ceased to be aware of the use merely because of the passage of time, or that it could turn a blind eye to the question of whether the use was continuing. But if the proprietor genuinely and reasonably believed that the use had ceased for a significant period of time, then the proprietor could not be said to be acquiescing in or tolerating the use during that period. The claimants were not aware of the use of the defendant’s sign 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 the defendants had withdrawn from the UK market. That being so, the judge was correct to find that the claimants did not acquiesce in the use that did in fact occur during that period. It followed that the defendant’s appeal against the judge’s rejection of their section 48(1) defence would be dismissed (paras 90–91, 93, 96, 126, 127).

(4) It was not right to give section 11(1) of the 1994 Act a purposive interpretation. It was incorrect to suggest that the defence was available if the later trade mark would not be declared invalid including pursuant to section 47(2A) or (2G) or section 48(1). Since it was established that there had been no acquiescence during the relevant period for the purposes of section 48(1), the defence under section 11(1) would also fail (paras 106, 111–112, 126, 127).