No proof of “actual awareness”: acquiescence argument fails in the EU
General Court decision T-136/23 is a reminder that the threshold to establish acquiescence is high, and that earlier marks can invalidate EU trade mark (EUTM) registrations that have been in use for more than five years.
The figurative EUTM “vintae” was registered in 2008 for, inter alia, “alcoholic beverages (except beers)” in class 33 and related retail/wholesale services in class 35.
12 years post-registration, Grande Vitae brought an invalidation action on the basis of a likelihood of confusion with (in particular) its earlier German word mark VITAE, which covered identical/similar goods.
Vintae claimed that Grande Vitae had acquiesced in the use of “vintae” for a period of five successive years and should be prevented from bringing the invalidation action. However, neither the Cancellation Division nor the Board of Appeal considered Vintae’s evidence proved acquiescence. A likelihood of confusion was found, and Vintae appealed to the General Court.
The General Court focused on the conditions for acquiescence. Some key takeaways are:
- the purpose of limitation in consequence of acquiescence is to penalise proprietors of earlier marks who have acquiesced in the use of a later EUTM for a period of five successive years whilst being aware of the use.
- the five-year period will run from when the earlier mark owner becomes “actually aware” of the use of the later EUTM registration.
- mere presumptions or suppositions of use are insufficient to prove acquiescence, and general knowledge of the use in the sector concerned, which could be inferred from, for example, the duration of use, is not enough to prove acquiescence (although may be relevant to bad faith claims).
Therefore, even if it could be proved that both parties won awards in the same wine competitions and that this attracted significant media coverage and/or that both parties attended the same international trade fairs, this did not prove “actual awareness”. It could not be presumed that Grande Vitae had seen Vintae’s mark on wine bottles in media coverage, during competitions, or at trade fairs. Therefore, the conditions for acquiescence had not been proved, and the invalidation action was successful.
