Claire Lehr of our Intellectual Property team recently wrote an article in World Trademark Review, examining the decision in Industrial Cleaning Equipment (Southampton) Ltd v Intelligent Cleaning Equipment Holdings Co Ltd ([2023] EWCA Civ 1451, 6 December 2023),  where in a departure from EU law, the Court of Appeal found that the clock for the five-year period for statutory acquiescence starts ticking when the earlier trademark owner becomes aware of the use of a later trademark.

The claimant had been using the ICE logos for the sale and rental of cleaning machines in the United Kingdom since around 2007. The defendant manufactured floor cleaning machines in China which were imported (through a further defendant in the proceedings) in the United Kingdom since 2013.

The defendant’s trademark rights included an International Registration (word mark) for ICE, received at the EUIPO on 23 July 2015, and a logo mark, received at the EUIPO on 13 August 2015. Both marks were registered at WIPO on 18 June 2015. Upon Brexit, the defendant’s EU marks were taken on to the UK register with filing dates of 18 June 2015 and dates of entry on the register of 25 May 2016 and 15 June 2016, respectively.

The claimant filed for a UK trademark incorporating ICE in October 2015. The mark proceeded to registration in January 2016.

The parties were aware of each other in 2014. There was later contact from around 2017, not least because the claimant maintained some of the defendant’s products in the United Kingdom.

On 2 July 2019 the claimant sent a letter before claim alleging infringement and passing off. The defendant’s response letter of 26 July 2019 denied the claims and relied on the defendant’s registrations. Some further discussion ensued but negotiations broke down; a claim form was issued on 24 May 2021 and served on 21 September 2021. The defendant raised the defence of statutory acquiescence.

You can read the full article here (pdf).

This article first appeared on WTR Daily, part of World Trademark Review, in (January 2024). For further information, please go to www.worldtrademarkreview.com.


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