Acquiescence (forclusion par tolérance)

Acquiescence deprives the proprietor of an earlier trade mark of the right to apply for a declaration of invalidity of a later registered trade mark, or to oppose its use, where it has knowingly tolerated that use for five consecutive years. It derives from Article 9 of Directive (EU) 2015/2436 and from Article 61 of Regulation (EU) 2017/1001 for the European Union trade mark, and the French Intellectual Property Code reproduces it both for the invalidity action and for the infringement action.

The conditions of acquiescence

Four cumulative conditions apply. The later trade mark must be registered, mere unregistered use not triggering the period. It must have been used, registration without exploitation being insufficient. The proprietor of the earlier trade mark must have been aware of that use, the period running from that awareness and not from registration. Finally, the tolerance must have lasted five consecutive years without any act of opposition, the Court of Justice of the European Union holding that a formal notice is not always sufficient to interrupt the period where it is not followed by court proceedings. Acquiescence is excluded where the later trade mark was filed in bad faith.

The effects

Acquiescence does not extinguish the earlier trade mark. It organises a forced coexistence: the proprietor of the earlier trade mark can no longer challenge the later trade mark, whether for invalidity or for infringement, in respect of the goods or services for which the use was tolerated. Conversely, the proprietor of the later trade mark cannot oppose the use of the earlier trade mark. Acquiescence is confined to the goods and services actually marketed and does not cover a subsequent extension of use to other goods or territories.

Litigation issues

Acquiescence is a defence, which the court does not raise of its own motion and which the defendant must prove. In practice the debate turns on the date of awareness, which the defendant seeks to establish through commercial dealings, shared trade fairs, correspondence or the notoriety of its business, and on the acts that interrupt the period. It differs from the limitation period for infringement actions, which confines compensation to the acts of the last five years without validating the later trade mark. It also differs from the coexistence agreement, which arranges voluntarily what acquiescence imposes.

Key points

Five years of knowing tolerance of a later registered and used trade mark permanently close the routes of invalidity and infringement against it, save where the applicant acted in bad faith. The period runs from awareness of the use, and only court proceedings interrupt it with certainty. The registers and the market should be monitored, and a formal notice should never be left without judicial follow up where the use persists.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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