Case No. IP-2021-000046

30.The defendants in this case run an acquiescence defence under section 48 TMA which provides:(1)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, orb.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. (2)Where subsection (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark or, as the case may be, the explanation of the earlier right, notwithstanding that the earlier trade mark or right may no longer be invoked against his later trade mark.31.At the time of trial there were several disputes between the parties about the proper interpretation of these statutory provisions. Following the handing down by the Court of Appeal on 30 November 2022 of its judgment in Combe International LLC and Anor v Dr August Wolff GMBH & Co KG and Ors [2022] EWCA Civ 1562 while this judgment was being prepared, the disputes have reduced in number but not disappeared. I permitted the parties to file additional written submissions addressing the effect of the Court of Appeal’s decision on this case. To the extent that Mr St. Ville, Kings Counsel took that as an opportunity to make new submissions on matters of fact which had not been raised at trial, in paragraphs 22 to 25 of his post-trial written submissions, I do not take those into account. Mr St. Ville also filed further written submissions responding to Ms Messenger’s written submissions on Combe. I did not permit or invite him to do so, and I have also put those to one side.32.As the Combe judgment explains, Section 48(1) successively implemented into English law, at a time when the UK was a Member State of the European Union, Article 9(1) of First Council Directive 89/104/EEC of 21 December 1988, Article 9(1) of European Parliament and Council Directive 2009/95/EC of 22 October 2008 and Articles 9(1) and 18(1) of European Parliament and Council Directive 2015/2436 /EU of 16 December 2015. Accordingly, CJEU jurisprudence up to the exit of the UK from the EU is retained law and remains relevant to my consideration of s48 TMA. Anything after that date may be persuasive but is not binding.33.There are two CJEU decisions of particular relevance relied on by both parties in this case and which were also addressed by the Court of Appeal in Combe: Budejovicky Budvar np v Anheuser-Busch Inc [2011] ECR I-08701 (which predates the exit of the UK from the EU) and Heitec AG v Heitch Promotion GmbH (C-466/20) [2022] ETMR 36 (which post-dates it, so is merely persuasive).34.The CJEU in Budvar held that “acquiescence” within the meaning of Article 9(1) of the Directive 89/104 should be given an autonomous and uniform interpretation, and that the concept of acquiescence “implies that the person who acquiesces remains inactive when faced with a situation which he would be in a position to oppose” (at [44]). It held that there were four prerequisites for the running of the period of limitation prescribed in Article 9(1): i)registration of the later trade mark in the Member State concerned; ii)the application for registration of that mark being made in good faith;iii)use of the later mark by its proprietor in the Member State where it has been registered; and iv)knowledge by the proprietor of the earlier trade mark that the later trade mark has been registered