Factual and Procedural Background
This case concerns a trade mark dispute between rival users of the acronym ICE. The Plaintiff uses ICE to stand for Industrial Cleaning Equipment, while the Defendants use ICE to stand for Intelligent Cleaning Equipment. The Plaintiff was incorporated in 1992, continuing a business founded in 1967 providing retail, rental, and maintenance services for cleaning equipment in the United Kingdom under the name Industrial Cleaning Equipment and the acronym ICE. The Defendants form part of the ICE Group, whose ultimate parent is Intelligent Cleaning Equipment Company, manufacturing floor cleaning machines in China and distributing them in the UK since June 2013. The First Defendant holds the ICE Group's intellectual property rights, and the Fourth Defendant has been its UK distributor since 2019.
The First Defendant owns two International Trade Marks for the word ICE and the ICE logo, registered for floor cleaning machines. These marks were registered internationally via the Madrid Protocol in June 2015 and subsequently registered with the EU Intellectual Property Office (EUIPO) in 2016. Post-Brexit, comparable UK registrations replaced the EU trade marks for UK protection.
The Plaintiff initially denied knowledge of the Defendants' trade mark use in the UK before March 2019 but later admitted knowledge from July 2014. The Plaintiff applied to register its own ICE logo as a UK trade mark in October 2015, which was registered in January 2016. The Plaintiff’s solicitors sent a letter before claim alleging infringement in July 2019, to which the Defendants responded denying infringement and relying on their EU trade marks. The Plaintiff filed invalidation actions against the Defendants' EU trade marks in November 2019 but withdrew them in January 2021. The present claim form was issued in May 2021 and served in September 2021.
The Intellectual Property Enterprise Court judge granted relief for trade mark infringement to the Plaintiff against the First and Fourth Defendants, dismissed the Defendants' counterclaims, and rejected the Defendants' statutory acquiescence defence. The Defendants now appeal, raising issues concerning the start date of the five-year limitation period under statutory acquiescence provisions.
Legal Issues Presented
- Whether the five-year limitation period for statutory acquiescence starts to run only when the proprietor of the earlier trade mark is aware of both the use and registration of the later trade mark, or whether awareness of use alone suffices.
- In the case of an international trade mark protected in the EU, whether the relevant registration date for limitation purposes is the international registration date or the date from which the trade mark is protected in the EU (e.g., acceptance or publication date by EUIPO).
- When does statutory acquiescence cease for the purposes of limitation?
- Whether statutory acquiescence bars a claim for passing off in addition to trade mark infringement.
Arguments of the Parties
Appellants' Arguments
- The proprietor of the earlier trade mark need not be aware of the registration of the later trade mark for the five-year limitation period to start; awareness of use suffices.
- The Court should depart from the earlier authoritative case (Budvar) that requires awareness of both use and registration.
- For international trade marks protected in the EU, the relevant registration date is the international registration date, not the date from which EU protection arises.
- If the international registration date is not accepted, the relevant date should be the date of acceptance rather than the date of publication.
Respondent's Arguments
- The five-year limitation period starts only when the proprietor of the earlier trade mark is aware of both the use and registration of the later trade mark, consistent with the Budvar decision.
- The relevant registration date for international trade marks protected in the EU is the date of acceptance or publication by EUIPO, not the international registration date.
- The Plaintiff contends that statutory acquiescence does not bar a claim for passing off.
- The Plaintiff argues that the five-year period ceased upon sending warning letters and issuing the claim form within reasonable time.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Case C-482/09 Budejovický Budvar np v Anheuser-Busch Inc [2011] ECR I-08701 |
Held that the five-year acquiescence period starts only when the earlier trade mark proprietor is aware of both use and registration of the later trade mark. |
The Court initially applied Budvar but ultimately decided to depart from it regarding the requirement of awareness of registration. |
| Case R 1299/2007-2 Cristanini v Ghibli SpA (EUIPO Board of Appeal, 2008) |
Held that knowledge of use alone suffices for acquiescence; awareness of registration is not required. |
The Court found this reasoning persuasive and contrasted it with Budvar, supporting departure from Budvar. |
| Case T-133/09 I Marchi Italiani Srl v OHIM [2012] EU:T:2012:327 |
Set out four conditions for limitation by acquiescence, including awareness of use after registration (without explicit requirement of awareness of registration). |
The Court considered this case’s interpretation consistent with the view that awareness of registration is not required. |
| Combe International LLC v Dr August Wolff GmbH & Co KG [2022] EWCA Civ 1562 |
Explained the operation and purpose of statutory acquiescence and the distinction between registration and use. |
Supported the interpretation that acquiescence concerns awareness of use, not registration. |
| BSA by R2 Trade Mark [2008] RPC 22 |
Explained calculation of limitation periods in trade mark law. |
Applied analogously to determine that claim form issued on last day of limitation period stops time running. |
| Pritam Kaur v S Russell & Sons Ltd [1973] QB 336 |
Clarified limitation period calculation, including last day for issuing claim form. |
Applied to confirm claim form issued on last day is timely. |
| R (British American Tobacco UK Ltd) v Secretary of State for Health [2016] EWCA Civ 1182 |
Clarified that registration confers exclusionary rights but not a positive right to use a trade mark. |
Supported reasoning distinguishing registration and use in statutory acquiescence context. |
| Heitec AG v Heitech Promotion GmbH [2022] EU:C:2022:400 |
Explained the purpose of statutory acquiescence and when time stops running. |
Applied to determine that warning letters alone do not stop time; court or administrative action is required within reasonable time. |
Court's Reasoning and Analysis
The Court analysed the statutory framework governing limitation by acquiescence under section 48 of the Trade Marks Act 1994 and corresponding EU provisions. It reviewed relevant EU Directives, Regulations, and the Madrid Protocol to identify the applicable legislation and its interpretation. The Court examined the binding precedent of Budvar, which required awareness of both use and registration of the later trade mark to start the five-year limitation period.
The Court considered the conflicting interpretations from EUIPO Boards of Appeal and the General Court, which require only awareness of use, not registration. It found the reasoning in Ghibli and subsequent EUIPO and General Court decisions more persuasive, noting that Budvar lacked detailed analysis and that the requirement of awareness of registration would impose practical difficulties and perverse incentives on trade mark proprietors.
The Court emphasised the distinction between registration (a legal formality conferring rights) and use (which affects the market and consumer perception). The legislation focuses on acquiescence in use, not registration. The Court also highlighted that requiring knowledge of registration could complicate and burden proof and create legal uncertainty.
Therefore, the Court concluded that the five-year limitation period for statutory acquiescence begins when the proprietor of the earlier trade mark becomes aware of the use of the later trade mark, provided the later trade mark is in fact registered, regardless of whether the earlier proprietor is aware of the registration.
Regarding international trade marks protected in the EU, the Court held that the relevant registration date for limitation purposes is the date of acceptance or publication of the registration by EUIPO, not the international registration date recorded by WIPO. This interpretation aligns with the procedural realities and legal effect of EU trade marks and the Madrid Protocol.
Applying these principles to the facts, the Court found that the Plaintiff became aware of the Defendants' trade mark use around July 2014, but the relevant registration dates for the Defendants' EU trade marks were in May and June 2016. The Plaintiff issued the claim form on 24 May 2021, the last day of the five-year period, thereby stopping time running and preventing acquiescence from arising.
The Court also addressed the issue of when acquiescence ceases, concluding that warning letters alone do not suffice; some formal administrative or court action must follow within a reasonable time. The Plaintiff's letters and claim form were not within a reasonable period to stop time earlier, but the claim form was timely to stop time at the end of the period.
Finally, the Court considered whether statutory acquiescence bars a claim for passing off. It rejected the Plaintiff’s argument that it does not, explaining that the specific statutory limitation provisions take precedence over the general law of passing off. Thus, statutory acquiescence would bar both infringement and passing off claims if established.
Holding and Implications
The Court's final decision is to DISMISS THE APPEAL.
The Court held that the five-year limitation period for statutory acquiescence starts to run when the proprietor of the earlier trade mark becomes aware of the use of the later trade mark, provided the later trade mark is registered, irrespective of the earlier proprietor’s awareness of the registration. This represents a departure from the earlier binding EU case Budvar.
Regarding international trade marks protected in the EU, the relevant registration date for limitation purposes is the date of acceptance or publication by EUIPO, not the international registration date.
On the facts, the Plaintiff issued the claim form just in time to prevent acquiescence. Consequently, statutory acquiescence does not bar the Plaintiff’s claims in this case.
No new precedent was set beyond the Court’s decision to depart from Budvar on the interpretation of the limitation period start date. The decision clarifies the application of statutory acquiescence in UK law post-Brexit and aligns it with EUIPO and General Court practice, with practical consequences for trade mark enforcement and strategy.