Threshold for Acquiescence Ruling in Trade Mark Dispute

The EU General Court has provided helpful guidance on the issue of acquiescence in a trade mark dispute involving competing alcohol brands. Acquiescence, under EU trade mark law, refers to a situation where a rights holder knowingly allows the use of a conflicting trade mark for an uninterrupted period without taking action. Once this period elapses, the rights holder may lose the ability to challenge the later mark. The decision is broadly in line with case law on acquiescence to date and serves as a reminder of the difficulties associated with establishing the concept of acquiescence in related disputes. Mere presumptions are not sufficient, nor is it sufficient to establish that the owner of the earlier mark must have been aware of the use of the later similar or identical mark. We review the decision and consider its impact for brand owners in the food and beverage sector.

Background

Vintae Luxury Wine Specialists S.L.U registered the mark, as illustrated, in April 2008 as a EU trade mark (EUTM).

The mark protected amongst other goods, alcoholic beverages (except beers) in Class 33 and commercial retailing and wholesaling of alcoholic beverages in Class 35. Grande Vitae GmbH filed an invalidity application in July 2020 against the above mark for the above goods in Class 33 as well as the above Class 35 services. The invalidity application was based on its earlier national German trade mark and EUTM for VITAE as both of those marks also protect alcoholic beverages (except beers) in Class 33.

Acquiescence

In its defence to the invalidity application, Vintae argued that Grande Vitae had acquiesced in Vintae’s use of the logo mark. The Cancellation Division of the EUIPO and the Board of Appeal both granted the invalidity application and dismissed the acquiescence defence. The Board of Appeal held that the evidence submitted by Vintae was insufficient to establish that Grand Vitae had actually been aware of the use of the Vintae logo. It found that Vintae had failed to prove this awareness for five successive years before Grand Vitae filed the invalidity application. Vintae appealed to the EU General Court.

General Court decision

The General Court dismissed the appeal.

The law on acquiescence

It reiterated the four conditions that must be satisfied for acquiescence to arise. These conditions apply in instances where a later trade mark is used that is identical or confusingly similar to an earlier trade mark:

1. The later trade mark must be registered
2. The application must have been made in good faith
3. The later trade mark must be used in the Member State where the earlier trade mark is protected
4. The owner of the earlier mark must be aware of the use of the later mark after its registration.

Evidence required

Regarding point 4, the General Court noted that the owner of the later mark must submit evidence of an actual awareness of the use of that mark by the owner of the earlier mark. This evidence is essential in order for acquiescence to be invoked. Evidence of potential or presumed awareness is not sufficient. Similarly, it is not sufficient to prove that the owner of the earlier mark could or should have been aware of the later mark.

The Court noted that the fact that both companies participated in the 2015 edition of the ‘Berliner Wine Trophy’ and that they both won awards in that edition. Despite these factors, however, the Court deemed they were insufficient to establish that Grande Vitae was actually aware of the use of the Vintae mark. In addition, significant media coverage of the ‘Berliner Wine Trophy’ did not in itself establish actual awareness of the use of the mark. An interpretation like this would effectively presume actual awareness based solely on evidence of general knowledge within the ‘Berliner Wine Trophy’ wine sector. This approach would conflict with established case law, which requires specific proof of awareness rather than assumptions based on general industry knowledge.

Finally, evidence of Grand Vitae’s participation in the same edition of the Pro Wein trade fair as ‘Vitae’ was not sufficient to establish actual awareness of the use of the mark. This was the case given the scale of this international trade fair. As a result, the Court determined that it would be very difficult for a participant to see or visit all the stands of the other exhibitors and to see all of the trade marks appearing on those stands.

Impact

The decision serves as a reminder to brand owners of the difficulties with seeking to rely on acquiescence as a defence in trade mark disputes. The key takeaway is that evidence of knowledge of the use of the later mark by the owner of the earlier mark is essential in establishing acquiescence.

This is consistent with the Court of Justice of the EU (CJEU) decision in the well-known Anheuser-Busch v Budejovický Budvar case, which is the leading case on trade mark acquiescence in the alcohol space. That case involved competing beers under the mark Budweiser where the parties had been in dispute for more than 30 years.

On the question of acquiescence, the CJEU held that the five-year period necessary before a party could be held to have acquiesced could only start once the potential challenger was aware of both the registration of the mark in dispute and its use. Additionally, the challenger must be in a position to take action. This sets a high bar, where presumptions are not enough, regardless of how obvious or blatant the use of the mark may seem. It also serves as a reminder to brand owners of the importance of maintaining up-to-date records on the use of their own marks, as well as actively monitoring the actions of competitors.

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