The Court of Justice of the European Union has handed down an opinion (the “Opinion”) from Advocate General Trstenjak in Case 482/09 Budějovický Budvar, národní podnik v Anheuser-Busch, Inc. on a reference from the English Court of Appeal concerning when the proprietor of an earlier trade mark may lose its enforcement rights through acquiescence as a result of failing to assert its earlier trade mark to prevent the registration and use by a competitor of a later mark.

The Advocate General found that the five-year acquiescence period should be deemed to run from the later of the date when the later mark became registered, or the date when the person alleged to have acquiesced could show that it had first learnt of the later registered mark. As a result, the proprietor of the earlier registration in this case was able to legitimately commence invalidity proceedings on the final day of the five-year acquiescence period, even though the parties had co-existed under the English doctrine of honest concurrent use for several years. In terms of practical effect, trade mark proprietors who are aware of earlier registrations for identical or similar marks should be ready to respond to tactical invalidity proceedings right up until the final day of five year period following registration of their marks.

Click here for more detail on the background to the case and the Advocate General’s Opinion.