Industrial Cleaning Equipment (Southampton) Limited v Intelligent Cleaning Equipment Holdings Co Ltd & Anor

For limitation by statutory acquiescence, the five-year period begins when the proprietor of the earlier trade mark knows of the use of the later mark and that later mark is in fact registered. Knowledge of its registration is unnecessary.

An international registration designating the EU is initially equivalent to an application. It cannot start the period before EUIPO accepts it or publishes the resulting protection. Proceedings issued on the final day of the five-year period, and duly served, prevent five complete years of acquiescence. A warning letter does so only if followed by proceedings within a reasonable period.

Statutory acquiescence may bar a passing-off claim based on an earlier right. The preservation of passing off by the Trade Marks Act 1994 does not override that specific limitation.

The claimant and defendants were rival users of the acronym ICE for cleaning equipment and related services. The claimant alleged infringement of its UK trade mark and passing off. The defendants relied on their international registrations designating the EU, which later generated comparable UK registrations.

The Intellectual Property Enterprise Court granted the claimant relief and rejected the defendants’ statutory-acquiescence defence. It held that the claimant had to know both of the defendants’ use and of the registration of their marks, and that such knowledge began in July 2019: [2023] EWHC 411 (IPEC).

The defendants appealed. The principal questions were whether knowledge of registration was required, when an international mark designating the EU became registered for acquiescence purposes, and whether the claimant had acted before five years elapsed. A respondent’s notice also raised the effect of warning letters and whether statutory acquiescence could bar passing off.

1. Appeal dismissed. The court departed from Budějovický Budvar np v Anheuser-Busch Inc Case C-482/09 on the knowledge requirement. Statutory acquiescence concerns acquiescence in use. The five-year period begins once the proprietor of the earlier right knows of the later mark’s use and the later mark is in fact registered. Knowledge of registration is unnecessary. Use affects the market, while registration provides an exclusionary right. Requiring knowledge of registration would also reward failure to consult the public register and create unnecessary evidential and practical difficulties: paras 69–79, 89.
2. Budvar was retained EU case law, so departure required the same cautious approach used by the Supreme Court when departing from its own precedents. Departure was justified because Budvar stated the relevant conclusion without analysis or apparent argument on the point; EUIPO and General Court authority took a divergent approach; the legislation’s purpose and practical operation supported the contrary interpretation; and legal certainty carried limited weight in the circumstances: paras 80–89. Nugee LJ agreed that those considerations justified departure: paras 119–122.
3. An international registration designating the EU has, from its international registration date, the effect of an application for an EU trade mark. Only after EUIPO has completed examination and opposition procedures without refusing protection does it have the effect of an EU registration, retrospectively effective from the international registration date. The registration date for statutory acquiescence was therefore no earlier than EUIPO’s acceptance, and was either the acceptance or second-republication date. It was unnecessary to choose between those dates here: paras 96–106.
4. The earliest relevant date was 24 May 2016. Issue of the claim form on 24 May 2021 was therefore timely because it prevented five complete years of acquiescence from accruing. Timely service within four months made issue effective to stop time: para 106; paras 123–125.
5. A warning letter stops acquiescence only when followed by administrative or judicial proceedings within a reasonable period. The proceedings were not commenced within a reasonable period after either warning letter in this case: paras 108–109.
6. If established, statutory acquiescence would also have barred the passing-off claim. Section 2(2) of the Trade Marks Act 1994 does not qualify the specific limitation in section 48(1), which expressly extends to earlier rights protected through passing off. As acquiescence was not established, neither infringement nor passing off was barred. The contingent cross-appeal required permission, which the court would grant, but no determination or remittal was required: paras 110–116.

1. Court of Appeal (Civil Division): The appeal was dismissed. The court departed in part from retained EU authority but held that the defendants’ EU marks were not registered early enough for five years’ acquiescence to have accrued before proceedings were issued: [2023] EWCA Civ 1451.
2. High Court, Intellectual Property Enterprise Court: The judge granted the claimant relief for trade mark infringement, dismissed the defendants’ invalidity and infringement counterclaims, and rejected statutory acquiescence because the claimant lacked knowledge of registration until July 2019: [2023] EWHC 411 (IPEC).