“Where the proprietor of an earlier trade mark … has acquiesced for a continuous period of five years in the use of a registered trade mark in the United Kingdom, being aware of that use, there shall cease to be any entitlement on the basis of that earlier trade mark … - (a) to apply for a declaration that the registration of the later trade mark is invalid, or (b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used, unless the registration of the later trade mark was applied for in bad faith.” unless the registration of the later trade mark was applied for in bad faith.”
“It is important, for reasons of legal certainty and without inequitably prejudicing the interests of a proprietor of an earlier trade mark, to provide that the latter may no longer request a declaration of invalidity nor may he oppose the use of a trade mark subsequent to his own of which he has knowingly tolerated the use for a substantial length of time, unless the application for the subsequent trade mark was made in bad faith.”
“Limitation in consequence of acquiescence Where, in a Member State, the proprietor of an earlier trade mark as referred to in Article 4(2) has acquiesced, for a period of five successive years, in the use of a later trade mark registered in that Member State while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later trade mark was applied for in bad faith.”
“… may also take the form of a failure on the part of the proprietor of a mark to have recourse to Article 5 [Rights conferred by a trade mark] in due time, for the purposes of applying to the competent authority to prevent third parties from using the sign in respect of which there is a likelihood of confusion with that mark, since the purpose of such applications is precisely to preserve the distinctive character of the mark in question.”
“50. It follows from the foregoing that the proprietor of an earlier mark or other earlier right is time-barred from seeking a declaration of invalidity or opposing the use of a later mark applied for in good faith, where, for a period of five consecutive years, while being aware of such use, it failed to carry out an act that clearly expressed its wish to oppose that use and to remedy the alleged infringement of its rights. … 52. As regards the conditions under which the proprietor of the earlier mark or other earlier right may be regarded as having carried out an act that produces the effects referred to in paragraph 50 above and therefore interrupts the period of limitation, the Court has held that, in any event, the bringing of an administrative or court action before the expiry of that period ends acquiescence and consequently prevents limitation (see, to that effect, … Budvar … at paragraph 49). 53. By bringing such an action, the proprietor of the earlier mark or other earlier right unequivocally expresses its wish to oppose the use of the later mark and to remedy the alleged infringement of its rights.”
“54. Where, as in the present case, the bringing of that action was preceded by the sending of a warning letter, with which the proprietor of the later mark did not comply, that warning letter may interrupt the period of limitation in consequence of acquiescence provided that, following the unsatisfactory response to that warning letter, the proprietor of the earlier mark or other earlier right continues to express its opposition to the use of the later mark and takes the measures available to it to enforce its rights. 55. In contrast, if the proprietor of the earlier mark or other earlier right, having expressed its opposition to the use of the later mark by a warning letter, did not, after noting the refusal of the addressee of that letter to comply with it or to enter into negotiations, pursue its efforts within a reasonable period in order to remedy that situation, where appropriate by bringing an administrative or court action, it must be inferred that that proprietor failed to take the measures available to it to put an end to the alleged infringement of its rights. 56. Any interpretation of Article 9 of Directive 2008/95 and Articles 54 … of Regulation No 207/2009 to the effect that sending a warning letter is sufficient, in itself, to interrupt the period of limitation would allow the proprietor of the earlier mark or other earlier right to circumvent the regime for limitation in consequence of acquiescence by repeatedly sending a warning letter approximately every five years. Such a situation would undermine the objectives of the regime for limitation in consequence of acquiescence, referred to in paragraphs 46 to 48 above, and would deprive that regime of its effectiveness. 57. In the light of all the foregoing considerations, the answer to the first and second questions is that Article 9 of Directive 2008/95 and Articles 54, 110 and 111 of Regulation No 207/2009 must be interpreted as meaning that an act, such as a warning letter, by which the proprietor of an earlier mark or other earlier right opposes the use of a later mark without taking the necessary steps to obtain a legally binding solution, does not stop acquiescence and, consequently, does not interrupt the period of limitation.”
“… must be interpreted to mean that the limitation in consequence of acquiescence referred to in those provisions may be prevented by the bringing of a court action in which the proprietor of an earlier mark … seeks a declaration of invalidity of a later mark or opposes the use of that mark, where the application initiating proceedings, although filed before the date of expiry of the period of limitation, was not, owing to a lack of diligence on the part of the applicant, served on the defendant until after that date.”
“As noted in paragraph 52 above, the bringing of an administrative or court action before the expiry of that period ends acquiescence and consequently prevents limitation. ”
“62. … as the Advocate General observed in point 53 of his Opinion, the lodging of the application initiating proceedings normally reflects the genuine and unambiguous wish of the applicant to assert its rights, which is sufficient, in principle, to end acquiescence and, consequently, to interrupt the period of limitation. 63. The conduct of that party may nevertheless, in certain cases, raise doubts as to that wish and the serious nature of the action brought before the court seised. That is the case, in particular, where, owing to a lack of diligence on the part of the applicant, the application initiating proceedings is not rectified in good time when it fails to meet the formal requirements of national law for service on the defendant.”
“As explained in the context of the examination of the first and second questions, the proprietor of an earlier mark or other earlier right that, while being aware of the use of a later mark applied for in good faith, fails, for a continuous period of five years, to act in a manner that unequivocally expresses its wish to oppose that use and to remedy the alleged infringement of its rights is time-barred from challenging the use of that later mark.”
“... there was little if any active marketing of VAGISAN from June 2014 onwards, and that led to sales levels which can very fairly be described as de minimis, at least during the 11 month period between [September] 2015 and August 2016. [Counsel for the Defendants] submitted that ‘use’ does not have to be on a large or competitive scale, but it seems to me, as [counsel for Combe] submitted, that it needs to be on a meaningful or commercial scale. By that I mean on a scale which consistent with there being a continuing intention to sell the relevant products commercially. Here, that was not the position for a period of about two years. The low levels of activity were equally well consistent with the idea that Defendants’ foray into the market had failed, or at least was suspended for a prolonged period pending further review. In either case, I see little to persuade me that there was use in any active, commercial sense, and that is surely what the statute requires.”
“A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered (but see section 47(6) (effect of declaration of invalidity of registration)).”
“A registered trade mark is not infringed by the use of a later registered trade mark where that later registered trade mark would not be declared invalid pursuant to section 47(2A) or (2G) or section 48(1).”
“18. The judgment in [Case C-591/12 P Bimbo SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [EU:C:2014:305]] confirms that the principle established in [Case C-120/04 Medion AG v Thomson Sales Germany & Austria GmbH[2005] ECR I-8551 ]is not confined to the situation where the composite trade mark for which registration is sought contains an element which is identical to an earlier trade mark, but extends to the situation where the composite mark contains an element which is similar to the earlier mark. More importantly for present purposes, it also confirms three other points. 19. The first is that the assessment of likelihood of confusion must be made by considering and comparing the respective marks - visually, aurally and conceptually - as a whole. In Medion v Thomson and subsequent case law, the Court of Justice has recognised that there are situations in which the average consumer, while perceiving a composite mark as a whole, will also perceive that it consists of two (or more) signs one (or more) of which has a distinctive significance which is independent of the significance of the whole, and thus may be confused as a result of the identity or similarity of that sign to the earlier mark. 20. The second point is that this principle can only apply in circumstances where the average consumer would perceive the relevant part of the composite mark to have distinctive significance independently of the whole. It does not apply where the average consumer would perceive the composite mark as a unit having a different meaning to the meanings of the separate components. That includes the situation where the meaning of one of the components is qualified by another component, as with a surname and a first name (e.g. BECKER and BARBARA BECKER). 21. The third point is that, even where an element of the composite mark which is identical or similar to the earlier trade mark has an independent distinctive role, it does not automatically follow that there is a likelihood of confusion. It remains necessary for the competent authority to carry out a global assessment taking into account all relevant factors.”
“i) I of course accept that the phrase ‘DR WOLFF’s’ provides a degree of phonetic distinction to the composite mark, and moreover has surnominal and possessive significance - i.e., as [counsel for the Defendants] indicated, it suggests that ‘whoever Dr Wolff is, Vagisan belongs to him or her.’ ii) That much is true, but to my mind it still does not prevent the word VAGISAN having its own independent, distinctive role. VAGISAN is the product being sold. That is what the average consumer is interested in, given her condition. In the composite phrase, therefore, it has a natural emphasis and distinction. iii) As Ms Want pointed out in her witness statement for trial, it is common for pharmaceutical and cosmetic brands to use ‘Dr’ followed by a name as the ‘house’ brand for a range of sub-products (she gave a number of examples.) In such cases, it seems to me, the use of ‘Dr’ followed by a name is intended to seek to establish the credibility of the product - since it gives the impression it has the imprimatur of someone who is medically qualified. It is therefore not, it seems to me, likely to be understood as a signifier of trade origin, but rather an indicator of the authenticity and likely effectiveness of the product which is then described. That conclusion, it seems to me, is reinforced by the evidence of Mr Bowman (see above at [277]), to the effect that he still refers to the Defendants’ Moist Cream product as VAGISAN despite the rebranding. It seems quite natural to me that he should do so. iv) The next point of course is the one addressed at some length above, namely that VAGISAN is likely to be confused with VAGISIL. They are obviously not the same word, but they are sufficiently similar as to give rise to confusion and it seems to me that on the face of it, that remains so even if the comparison is between the composite phrase DR WOLFF’s VAGISAN and VAGISIL. VAGISAN retains its own independent, distinctive role even in the composite phrase and is very similar to the word VAGISIL. The strong similarity suggests they spring from the same commercial source, or at any rate, from sources which are linked commercially. v) That conclusion is reinforced by the fact that DR WOLFF is not and never has been a well-known brand name in the UK. Wolff’s products, such as Alpecin Caffeine Shampoo, may be well known, but the brand name DR WOLFF is not. Thus, the average consumer, seeing the phrase ‘DR WOLFF’s’ used in conjunction with ‘VAGISAN’, would not be inclined to think - yes of course, that is Dr Wolff the manufacturer of Alpecin Shampoo which is different to the company which manufactures VAGISIL. Moreover, as Ms Want pointed out in her evidence, neither are consumers familiar with Combe as the manufacturers of VAGISIL. In other words, there is nothing in the overall context which is likely to help the average consumer make a clear distinction between the separate trade origins of the two brands, even if one is described as DR WOLFF’s VAGISAN. vi) The upshot, in my view, is that the average consumer faced with DR WOLFF’s VAGISAN would nonetheless still consider it to be associated with VAGISIL. She would naturally place emphasis on the word ‘VAGISAN’ as having an independent distinctive role, and would naturally associate it with VAGISIL.”