What is acquiescence and why is it important?

Sometimes you may be aware of a new brand on the market that is the same, or similar to, your brand, but you might choose to take no action since their activity is not currently impacting your business.  Whilst this can be a valid course of action in some circumstances, you should be aware that in choosing to take no action, you can be considered to be acquiescing to use of the new brand by the other party, which can lead to loss of your rights to enforce your prior rights.

If you knowingly allow use of the new brand by the other party for a continuous period of five years, and then subsequently choose to enforce your rights, the other party may have an acquiescence defence under Section 48 of the Trade Marks Act 1994 (TMA).

What are the requirements for an acquiescence defence?

1.The later mark must be registered

2.The owner of the earlier mark must be aware that the later mark is in use in the United Kingdom (or can reasonably be presumed to be aware)

3.The owner of the earlier mark or right must have been aware of such use for at least five years, without objecting to such use.

4.The earlier mark may be a registered trade mark, but need not be.

Consequences

In brief, ignoring infringement of your trade marks can lead to you losing the right to stop it.

Section 48 TMA provides that following a continuous five-year period of acquiescence there shall cease to be any entitlement on the basis of the earlier right to apply for a declaration that the later trade mark registration is invalid, or to oppose use of the later trade mark in relation to the goods/services for which it has been so used. 

However, the proprietor of the later trade mark is not entitled to oppose use of the earlier trade mark or exploitation of the earlier right.

What should you do?

As a brand owner, to avoid acquiescence, and consequent loss of the ability to enforce your rights, brand owners should take action to prevent infringement of their prior rights, even for seemingly small conflicts. 

What it means to acquiesce can be difficult to define and often depends upon the details of the case.  However, simply sending a warning letter to the later mark owner is not generally sufficient to stop the five-year period from running, unless it results in a co-existence or settlement agreement.  If the agreement is subsequently breached a new five-year period will commence from when the earlier right holder had the requisite knowledge of the breach.  However, care should be taken.  If negotiations for settlement are undertaken, but proceed slowly, the prior right holder should consider also commencing action for infringement or passing off to protect their position.

Likewise, bringing an invalidity claim against the later registration may not avoid an acquiescence defence, unless the action is successful and finalised before the end of the five-year period.

Otherwise, only taking action against such use (such as an infringement or a passing off action) within the five year period, is clearly considered sufficient action to avoid an acquiescence defence.

On the other hand…

If you are on the receiving end of warning letter of action for infringement, for a mark you have been using for more than five years, it is worth considering whether you may have an acquiescence defence.

This defence does require evidence of the requisite knowledge, and the evidence needs to be strong.  It is unlikely to be sufficient to argue that the prior right holder should have been aware of the later mark simply because they operate in the same field.

In addition, there must have been five years of continuous use of the later mark.

If you would like to discuss any branding matters, including potential grounds for an acquiescence defence or how to avoid one, please contact us on mail@mathisen.co.uk.