General Court: The difficulty of proving acquiescence in EU trade mark law

The fact that a trade mark has been registered without opposition is no free pass for the trade mark owner. Conflicts can arise years after registration. One of the defences that can be raised in EU trade mark law is acquiescence (Art. 61(1),(2) EUTMR). The threshold for this defence is high, as a recent decision of the General Court shows.

Background

On 23 April 2007, Vintae Luxury Wine Specialists SLU (‘Vintae’) filed for registration of EU trade mark no. 005851092 for the following sign:

The trade mark was registered in 2008, inter alia, for ‘alcoholic beverages (except beers)’ in class 33 and ‘commercial retailing and wholesaling of alcoholic beverages’ in class 35.

In 2020, Grande Vitae GmbH (‚Grande Vitae‘) filed an application for invalidity based on its earlier German trade mark VITAE and EU trade mark VITAE, both registered for ‘alcoholic beverages (except beers)’.

Vintae argued that Grande Vitae had acquiesced in the use of the contested mark in accordance with Art. 61(1),(2) EUTMR. Neither the Cancellation Division of the European Union Intellectual Property Office (‘EUIPO’) nor the EUIPO’s Board of Appeal (‘BoA’) were convinced of acquiescence and declared the contested trade mark invalid because of a likelihood of confusion (Art. 8(1)(b) EUTMR).

Vintae filed an action with the General Court.

The General Court's Decision

The General Court dismissed the appeal (T-136/23).

Vintae’s plea of an infringement of Art. 8(1)(b) EUTMR by the BoA was dismissed as inadmissible because the complaint did not contain any arguments in this respect.

As a consequence, the Court focused on the question of whether the conditions of acquiescence under Art. 61(1),(2) EUTMR (formerly Art. 53(1),(2) Community Trade Mark Regulation, which was applicable to the case) were fulfilled. Art. 61(1) EUTMR deals with acquiescence regarding EU trade mark rights, Art. 61(2) EUTMR with acquiescence regarding national trade marks. The latter provides:

Where the proprietor of an earlier national trade mark […] has acquiesced, for a period of five successive years, in the use of a later EU trade mark in the Member State in which the earlier trade mark […] is protected while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark […] to apply for a declaration that the later trade mark is invalid in respect of the goods or services for which the later trade mark has been used, unless registration of the later EU trade mark was applied for in bad faith.

Since the Board only assessed the likelihood of confusion with respect to the earlier German trade mark, the Court limited its analysis to the conditions of Art. 61(2) EUTMR.

The judges held that the purpose of this provision is to penalise the proprietors of earlier marks who have acquiesced in the use of a later EU trade mark registered for a period of five successive years, while being aware of such use.

Further, the period of five years only starts once the proprietor of the earlier trade mark is in a position to oppose the later mark. This requires actual knowledge of the use of the later mark, i.e. the owner of the earlier mark must have tolerated the use in full knowledge of the facts.

Merely proving potential awareness of the use or the submission of evidence giving rise to the presumption of the existence of such awareness is not sufficient.

Moreover, the five-year period only starts running after the registration of the later mark.

Vintae argued that it attended several trade fairs at which Grande Vitae was also present. The judges found that it could not be presumed that an exhibitor saw all of its competitors’ stands and the trade marks appearing on those stands, especially in case of a large international trade fair.

The fact that Vintae’s wines were included in a leaflet for the competition ‘Best of Spain Top 100’, which was conducted during one of the conferences both parties attended, was also deemed insufficient as it was not established that Grande Vitae became aware of Vintae’s wines during the competition.

Both parties’ participation in the same editions of the ‘Mundus Vini’ competition was likewise insufficient to establish actual awareness of the use of the contested mark since (1) there was a large number of award-winning wines in said competition, (2) Vintae used the sign ‘vintae’ as a company name and not as a trade mark in the list of award-winning wines, and (3) Vintae did not show that Grande Vitae had seen Vintae’s wine bottles bearing the label ‘inspired by vintae’.

Likewise, the judges did not deem sufficient that both parties’ won awards at the ‘Berliner Wein Trophy’ and that this competition was subjected to significant media coverage. It did not prove actual knowledge of Grande Vitae but would result in a mere presumption of knowledge. Moreover, it was not established that both parties were present at the award ceremony.

The Court also held that Vintae could not rely on the presumption of knowledge arising from general knowledge of use in the economic sector concerned. Such knowledge can be inferred, inter alia, from the duration of use (case T‑592/20 at para. 29). This is a presumption applied in the assessment of bad faith but cannot be transferred to acquiescence.

Comment

The decision shows that the threshold to establish actual awareness and acquiescence is high. Mere presumptions or suppositions are not sufficient, no matter how obvious the use of the contested trade mark might have been. It is not enough to establish that the owner of the earlier mark must have been aware of the contested mark’s use. The German Supreme Court makes an exception when the owner intentionally tries to avoid knowledge, i.e. wilfully turns a blind eye to the trade mark’s use (ConText, case I ZR 50/14 at para. 36). This is a rare exception. 

 

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