“This judgment is too long already. Given the determinations that I have made so far, I do not find it necessary to go on to determine such of the passing-off case as remains.”
“Limitation in consequence of acquiescence 1. Where the proprietor of a Community trade mark has acquiesced, for a period of five successive years, in the use of a later Community trade mark in the Community 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 Community trade mark was applied for in bad faith. 2. Where the proprietor of an earlier national trade mark as referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) has acquiesced, for a period of five successive years, in the use of a later Community trade mark in the Member State in which the earlier trade mark or the other earlier sign is protected while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark or of the other earlier sign 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 Community trade mark was applied for in bad faith. 3. In the cases referred to in paragraphs 1 and 2, the proprietor of a later Community trade mark shall not be entitled to oppose the use of the earlier right, even though that right may no longer be invoked against the later Community trade mark.”
“Prohibition of use of Community trade marks 1. This Regulation shall, unless otherwise provided for, not affect the right existing under the laws of the Member States to invoke claims for infringement of earlier rights within the meaning of Article 8 or Article 52(2) in relation to the use of a later Community trade mark. Claims for infringement of earlier rights within the meaning of Article 8(2) and (4) may, however, no longer be invoked if the proprietor of the earlier right may no longer apply for a declaration that the Community trade mark is invalid in accordance with Article 53(2). …”
“Prior rights applicable to particular localities 1. The proprietor of an earlier right which only applies to a particular locality may oppose the use of the Community trade mark in the territory where his right is protected in so far as the law of the Member State concerned so permits. 2. Paragraph 1 shall cease to apply if the proprietor of the earlier right has acquiesced in the use of the Community trade mark in the territory where his right is protected for a period of five successive years, being aware of such use, unless the Community trade mark was applied for in bad faith. 3. The proprietor of the Community trade mark shall not be entitled to oppose use of the right referred to in paragraph 1 even though that right may no longer be invoked against the Community trade mark.”
“Whereas 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 1. 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. 2. Any Member State may provide that paragraph 1 shall apply mutatis mutandis to the proprietor of an earlier trade mark referred to in Article 4(4)(a) or another earlier right referred to in Article 4(4)(b) or (c). 3. In the cases referred to in paragraphs 1 and 2, the proprietor of a later registered trade mark shall not be entitled to oppose the use of the earlier right, even though that right may no longer be invoked against the later trade mark.”
“It is important, for reasons of legal certainty to provide that, without prejudice to his interests as a proprietor of an earlier trade mark, the latter may no longer request a declaration of invalidity or oppose the use of a trade mark subsequent to his own trade mark, 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.”
“Preclusion of a declaration of invalidity due to acquiescence 1. Where, in a Member State, the proprietor of an earlier trade mark as referred to in Article 5(2) or Article 5(3)(a) 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, that proprietor shall no longer be entitled on the basis of the earlier trade mark to apply for a declaration that the later trade mark is invalid 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. 2. Member States may provide that paragraph 1 of this Article is to apply to the proprietor of any other earlier right referred to in Article 5(4)(a) or (b). 3. In the cases referred to in paragraphs 1 and 2, the proprietor of a later registered trade mark shall not be entitled to oppose the use of the earlier right, even though that right may no longer be invoked against the later trade mark.”
“Intervening right of the proprietor of a later registered trade mark as defence in infringement proceedings 1. In infringement proceedings, the proprietor of a trade mark shall not be entitled to prohibit the use of a later registered mark where that later trade mark would not be declared invalid pursuant to Article 8, Article 9(1) or (2) or Article 46(3). 2. In infringement proceedings, the proprietor of a trade mark shall not be entitled to prohibit the use of a later registered EU trade mark where that later trade mark would not be declared invalid pursuant to Article 53(1), (3) or (4), 54(1) or (2) or 57(2) of Regulation (EC) No 207/2009. 3. Where the proprietor of a trade mark is not entitled to prohibit the use of a later registered trade mark pursuant to paragraph 1 or 2, the proprietor of that later registered trade mark shall not be entitled to prohibit the use of the earlier trade mark in infringement proceedings, even though that earlier right may no longer be invoked against the later trade mark.”
“A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented— (a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, where the condition in subsection (4A) is met, … A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an ‘earlier right’ in relation to the trade mark.”
“The Commission is of the opinion that the period of acquiescence starts to run from the time at which the proprietor of the earlier mark becomes aware of the use of the registered later mark. The period can thus begin at the earliest on the date of registration of the later mark, if that mark is used from that time and the proprietor of the earlier mark becomes aware of that use from that time.”
“The wording of Article 9(1) of the directive and the spirit and purpose of those provisions clearly show, in my opinion, that the commencement of the five-year period of acquiescence depends on the following three conditions being satisfied. First, it is necessary that the later mark is registered; secondly, the later mark must be used; thirdly, the proprietor of the earlier mark must be aware of the registration and use of the later mark. The rule is designed in such a way that all three conditions must be satisfied cumulatively.”
“For the purposes of the present proceedings there is no need to reach a definitive conclusion on the point of whether actual or even potential knowledge is material, since that question would probably only be relevant in a situation in which the proprietor of the earlier mark did not acquire knowledge of the later mark until some time after its registration. Such a situation is not present in the main proceedings, especially as it can safely be assumed that AB knew of the registration of the mark ‘Budweiser’ for BB on19 May 2000 . …. In addition, AB knew that the use by BB of the mark ‘Budweiser’ went back as far as the 1970s. Accordingly, the date of registration of the later mark and the date of acquisition of knowledge of its registration and use coincide.”
“The five-year period of acquiescence provided for in Article 9(1) of the directive starts running from the time at which the proprietor of the earlier mark becomes aware of the registration and use of the later mark in the Member State in which the later mark has been registered. The period of acquiescence can start running at the earliest from the date of that registration, if the later mark has been used from that date and the proprietor of the earlier mark became aware of that use at that time.”
“The prerequisites for the running of that period of limitation, which it is for the national court to determine, are, first, registration of the later trade mark in the Member State concerned, second, the application for registration of that mark being made in good faith, third, use of the later trade mark by its proprietor in the Member State where it has been registered and, fourth, knowledge by the proprietor of the earlier trade mark that the later trade mark has been registered and used after its registration.”
“42. In the Board’s view, that interpretation would be contrary to the objective pursued by Article 53(2) CTMR. This provision pursues an objective which is to create legal certainty by protecting the legitimate interest of a CTM Proprietor in the continued undisturbed ownership and use of its CTM vis-à-vis the proprietor of a prior right who despite having been aware of the long-term presence of the conflicting later sign on the market took no action to prohibit its use. In other words, that provision sanctions the Cancellation Applicant’s undue delay in exercising his trade mark rights whilst being aware of the long use of a later conflicting sign on the market. Considering the said underlying objective, Article 53(2) CTMR cannot be construed to require the knowledge of the registration of the later sign as a CTM, but only the use of such sign. 43. Article 53(2) CTMR merely requires that the Cancellation Applicant ‘has acquiesced, for a period of five successive years, to the use of a later Community trade mark…while being aware of such use’. 44. Firstly, it must be noted that this provision does not contain any explicit additional requirement that the Cancellation Applicant ought to have been also aware of the actual date of registration of the sign as a CTM. Had this been the will of the legislator, it would have expressly stipulated so (by adding, for example, ‘...while being aware of such registration and use...’). 45. Secondly, it must be noted that pursuant to Article 6 CTMR, ‘a Community trade mark is obtained by registration’. This means that the rights of the CTM proprietor come to legal existence on the effective date of registration of the Community trade mark, and not upon the later date in which the registration of the CTM will be published. Thus, the existence of the ‘later Community trade mark’ is only conditioned by its registration as a CTM and not by the subsequent publication of the registration. It is true that Article 9(3) CTMR, first sentence, provides that the rights conferred by a Community trade mark shall prevail against third parties from the date of publication of registration of the trade mark. However, the situation contemplated by this provision is different from that contemplated in Article 53(2) CTMR, where rather than seeking to make prevail (or enforce) its trade mark over third parties, the CTM Proprietor merely raises a defence in a cancellation action initiated by a third party, against its CTM. 46. Thus, in the Board’s view, the reference to acquiescence in the use of a later ‘Community trade mark’ in Article 53(2) CTMR merely refers to the requirement that the later sign (the use of which has been knowingly tolerated by the Cancellation Applicant), must have been registered as a CTM, for more than five years. This is, however, an objective requirement which is independent of the Cancellation Applicant’s knowledge. Indeed, Article 53 CTMR is clearly meant to be a defence in invalidity proceedings against registered CTMs. The negative consequences of acquiescence in use apply only in relation to registered CTMs. As a CTM comes into existence with its registration (Article 6 CTMR), for the purposes of Article 53(2) CTMR, the use of the sign as a CTM cannot technically commence before the date of registration. Hence, although the period of five successive years stipulated in Article 53(2) CTMR relates to the Cancellation Applicant’s awareness and tolerance of the use of contested sign, the calculation of the five-year period cannot start earlier than the date of the registration of the CTM, taking also into account that a CTM neither exists nor can therefore be invalidated before being registered. 47. Therefore, in the Board’s view, Article 53(2) CTMR cannot be interpreted to require the CTM Proprietor to prove – in addition to the five years concurrent use, knowingly tolerated by the proprietor of the earlier right – that the Cancellation Applicant also knew, for at least five years, that the later mark was protected as a CTM. What matters in this context is the objective circumstance that the sign (the use of which has been knowingly tolerated by the Cancellation Applicant), must have existed, for at least five years, as a CTM. Pursuant to Article 6 CTMR, a CTM comes into existence by its registration, while the date of publication of its registration is irrelevant in this context. Consequently, in the context of Article 53(2) CTMR it is also irrelevant when the publication of the registration of the contested CTM took place.”
“The wording of the rule refers specifically to acquiescence, for a period of five successive years, in the use of a Community trade mark. Since a Community trade mark is obtained by registration (Article 6 [CTMR]), for the purposes of Article 53(2) CTMR, the use of a sign as a Community trade mark (and, consequently, acquiescence in such use) cannot technically commence before the date of its registration. Therefore, although the period of five successive years provided for in the article in question refers to the awareness of and acquiescence in the use of the Community trade mark by the applicant for a declaration of invalidity, the starting date of the five-year period cannot precede the date of registration of the sign since the Community trade mark, as such, only exists from the date of registration (see, in this respect, the recent decision of this Board, of21 October 2008 , in Case R 1299/2007-2 – GHIBLI (figurative mark) / GHIBLI et al., paragraph 46).”
“The proprietor of the contested mark cannot be required to prove, in addition to the invalidity applicant’s awareness of the use of the contested EUTM, that the invalidity applicant was also aware of its registration, for at least 5 years, as an EUTM. The reference in Article 61(1) and (2) EUTMR to acquiescence in the use of a later ‘EUTM’ merely refers to the requirement that the later sign must have been registered as an EUTM for at least 5 years. This is an objective requirement, which is independent of the invalidity applicant’s knowledge (21/10/2008 , R 1299/2007-2, Ghibli(fig.), § 41-47).”
“31. According to the case-law, four conditions must be satisfied before the period of limitation in consequence of acquiescence starts running if there is use of a later trade mark which is identical with the earlier trade mark or confusingly similar. First, the later trade mark must be registered. Second, the application for its registration must have been made by its proprietor in good faith. Third, the later trade mark must be used in the Member State where the earlier trade mark is protected. Fourth, the proprietor of the earlier trade mark must be aware of the use of that trade mark after its registration (see, by analogy,Case C-482/09 Budějovický Budvar[2011] ECR I-8701 , paragraphs 54 and 56 to 58). 32. Contrary to what the first applicant claims, the period of limitation in consequence of acquiescence does not start running from the date on which the application for registration of the later Community trade mark is filed. Even if that date constitutes the relevant starting point for the application of other provisions of Regulation No 40/94, such as Article 51(1)(a) and Article 8(2) of that regulation (now Article 52(1)(a) and Article 8(2) of Regulation No 207/2009), which seek to establish a temporary priority between the marks at issue, it is not the date from which the period of limitation in consequence of acquiescence provided for in Article 53(2) of Regulation No 40/94 runs. The aim of Article 53(2) of Regulation No 40/94 is to penalise the proprietors of earlier trade marks who have acquiesced, for a period of five successive years, in the use of a later Community trade mark while being aware of such use, by excluding them from seeking a declaration of invalidity or from bringing opposition proceedings in respect of that trade mark, which will then therefore be able to coexist with the earlier trade mark. It is from the time when the proprietor of the earlier trade mark becomes aware of the use of the later Community trade mark that it has the option of not acquiescing in its use and, therefore, opposing it or seeking a declaration of invalidity of the later trade mark. It may not be held that the proprietor of the earlier trade mark acquiesced in the use of the later Community trade mark once it was aware of its use, if it was not in a position to oppose its use or to seek a declaration of invalidity thereof (see, by analogy, Budějovický Budvar, cited above in paragraph 31, paragraphs 44 to 50). 33. It follows from a teleological interpretation of Article 53(2) of Regulation No 40/94 that the relevant date from which the period of limitation in consequence of acquiescence starts running is when the proprietor becomes aware of the use of that mark. That date must necessarily be later than that of registration of the trade mark, that is to say when the rights in a Community trade mark are obtained (see recital 7 of Regulation No 40/94), and that mark will be used as a registered trade mark on the market with third parties therefore being aware of its use. Contrary to what the first applicant claims, therefore, it is from the time when the proprietor of the earlier trade mark is made aware of the use of the later Community trade mark, after its registration, and not the date on which the application for the Community trade mark is filed, that the period of limitation in consequence of acquiescence starts running.”
“It should be noted at the outset that the General Court recalled, in paragraph 31 of the judgment under appeal, the case-law according to which four conditions must be met in order for the limitation period to run in the event of the use of a trademark identical to the earlier mark. Those conditions include, in particular, the fact that the later mark must be registered, as well as the fact that the proprietor of the earlier mark must be aware of the registration of the later mark and the use of that mark after its registration (see, by analogy, judgment of22 September 2011 , Budějovický Budvar, C-482/09, not yet published in the ECR, paragraphs 54, 58 and 62).”
“58. … [Section 48(1)] specifies a single condition which has two separate consequences. It is important to distinguish the condition from the consequences. 59. The condition is that ‘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 [emphases added]’. Thus the acquiescence must be in respect of the use of the later trade mark. Acquiescence in the registration of a later trade mark which is not being used does not give rise to a defence under section 48(1). 60. The two consequences are that the proprietor of the earlier trade mark ceases to be entitled, first, ‘to apply for a declaration that the registration of the later trade mark is invalid [emphasis added]’; and secondly, ‘to oppose the use of the later trade mark [emphasis added]’. As is common ground, a declaration that the registration of the later trade mark is invalid has no impact at all on the use of that trade mark: the proprietor of the later trade mark remains free to continue to use it. This is because registration confers no positive right to use a trade mark, rather it is an exclusionary right to prevent others from using it: see Fédération Cynologique and R (British American Tobacco UK Ltd) v Secretary of State for Health[2016] EWCA Civ 1182 ,[2018] QB 149 at [46]-[69] (Lewison LJ giving the judgment of the Court of Appeal). If the proprietor of the earlier trade mark wishes to prevent use of the later trade mark, it must take action to oppose that use, that is to say, action to enforce the rights conferred by the earlier trade mark to prevent the use by other parties of conflicting signs i.e. infringing use. 61. Both the condition and the second consequence concern the use of the later trade mark. The rationale for this is obvious: having acquiesced in the use of later trade mark for five years, the proprietor of the earlier trade mark cannot (bring an action to) oppose further use of the later trade mark. The rationale for the first consequence is perhaps less obvious, but is nevertheless not hard to discern. As counsel for the Defendants pointed out, it is to protect the ability of the proprietor of the later trade mark to enforce the rights conferred by that trade mark to prevent the use by third parties (i.e. other than the proprietor of the earlier trade mark, which is protected from such a claim by section 48(2) implementing Article 9(3) of the Directive) of conflicting signs. The need for this arises because, in general, the grounds for bringing infringement proceedings mirror the relative grounds of objection to validity. Thus, if the proprietor of the earlier trade mark is able to oppose the use of the later trade mark in infringement proceedings, it will normally also be able to invalidate the later trade mark on the same grounds. …. 62. Combe point out that the defence created by section 48(1) only applies to later trade marks which are registered and not to unregistered trade marks. Combe argue that an application for a declaration of invalidity is an attack upon the existence of the registration which founds the defence, and therefore that must suffice to preclude acquiescence in the use of the earlier trade mark. The judge was persuaded by this argument, but I disagree. As I have explained, registration and use are different things. The defence is founded upon acquiescence in use, not acquiescence in registration. A claim for a declaration of invalidity constitutes action to oppose the registration of the later trade mark, but it does not constitute action to oppose the use of the later trade mark. Action to oppose use of the later trade mark requires a claim for infringement. As the Court of Justice put it in Fédération Cynologique at [47]-[48], actions for infringement and actions for declarations of invalidity ‘are distinguished in terms of their object and effects’.”
“65. ... There are three inter-related aspects to this. The first is that it is generally to strike a balance between the interest of the proprietor of a trade mark to safeguard its essential function, on the one hand, and the interests of other economic operators in having signs capable of denoting their goods and services, on the other. As the CJEU indicated in Budvar at [29], the way in which the proprietor of the earlier trade mark safeguards its essential function of indicating origin is by taking action to enforce its rights to prevent the use of conflicting signs. Removing a later trade mark from the register does not safeguard the essential function of the earlier trade mark. 66. The second aspect is that protection is limited to those cases in which the proprietor shows itself to be sufficiently vigilant by opposing the use of signs by other operators likely to infringe its mark. ... 67. The third aspect is the need for legal certainty. Like any limitation provision, section 48(1) is designed to prevent rights being enforced if the right holder does not take action for a period of time, here five years. In many contexts this is simply in order to forestall stale claims being litigated when memories have faded and documents have been destroyed or mislaid. But … in the trade mark context use of a conflicting sign may affect the average consumer’s perception of the earlier trade mark. That has potential consequences not only for the proprietors of the respective trade marks, but also for the consuming public. The central (although not necessarily the only) justification for trade mark protection is to reduce what the academic literature refers to as ‘consumer search costs’, but coexistence of confusingly similar trade marks is liable to increase such costs. Section 48(1) gives the proprietor of the earlier trade mark an incentive to prevent this happening.”
“Over the past 40 years the House has exercised its power to depart from its own precedent rarely and sparingly. It has never been thought enough to justify doing so that a later generation of Law Lords would have resolved an issue or formulated a principle differently from their predecessors.”
“Article 2 Securing Protection through International Registration (1) Where an application for the registration of a mark has been filed with the Office of a Contracting Party, or where a mark has been registered in the register of the Office of a Contracting Party, the person in whose name that application (hereinafter referred to as ‘the basic application’) or that registration (hereinafter referred to as ‘the basic registration’) stands may, subject to the provisions of this Protocol, secure protection for his mark in the territory of the Contracting Parties, by obtaining the registration of that mark in the register of the International Bureau of the World Intellectual Property Organization (hereinafter referred to as ‘the international registration,’ ‘the International Register,’ ‘the International Bureau’ and ‘the Organization,’ respectively) … Article 3 International Application … (4) The International Bureau shall register immediately the marks filed in accordance with Article 2. The international registration shall bear the date on which the international application was received in the Office of origin, provided that the international application has been received by the International Bureau within a period of two months from that date. If the international application has not been received within that period, the international registration shall bear the date on which the said international application was received by the International Bureau. The International Bureau shall notify the international registration without delay to the Offices concerned. Marks registered in the International Register shall be published in a periodical gazette issued by the International Bureau, on the basis of the particulars contained in the international application. … Article 3ter Request for ‘Territorial Extension’ (1) Any request for extension of the protection resulting from the international registration to any Contracting Party shall be specially mentioned in the international application. (2) A request for territorial extension may also be made subsequently to the international registration. Any such request shall be presented on the form prescribed by the Regulations. It shall be immediately recorded by the International Bureau, which shall notify such recordal without delay to the Office or Offices concerned. Such recordal shall be published in the periodical gazette of the International Bureau. Such territorial extension shall be effective from the date on which it has been recorded in the International Register; it shall cease to be valid on the expiry of the international registration to which it relates. Article 4 Effects of International Registration (1)(a) From the date of the registration or recordal effected in accordance with the provisions of Articles 3 and 3ter, the protection of the mark in each of the Contracting Parties concerned shall be the same as if the mark had been deposited direct with the Office of that Contracting Party. If no refusal has been notified to the International Bureau in accordance with Article 5(1) and (2) or if a refusal notified in accordance with the said Article has been withdrawn subsequently, the protection of the mark in the Contracting Party concerned shall, as from the said date, be the same as if the mark had been registered by the Office of that Contracting Party. … Article 5 Refusal and Invalidation of Effects of International Registration in Respect of Certain Contracting Parties (1) Where the applicable legislation so authorizes, any Office of a Contracting Party which has been notified by the International Bureau of an extension to that Contracting Party, under Article 3ter(1) or (2), of the protection resulting from the international registration shall have the right to declare in a notification of refusal that protection cannot be granted in the said Contracting Party to the mark which is the subject of such extension. Any such refusal can be based only on the grounds which would apply, under the Paris Convention for the Protection of Industrial Property, in the case of a mark deposited direct with the Office which notifies the refusal. … (2)(a) Any Office wishing to exercise such right shall notify its refusal to the International Bureau, together with a statement of all grounds, within the period prescribed by the law applicable to that Office and at the latest, subject to subparagraphs (b) and (c), before the expiry of one year from the date on which the notification of the extension referred to in paragraph (1) has been sent to that Office by the International Bureau. (b) Notwithstanding subparagraph (a), any Contracting Party may declare that, for international registrations made under this Protocol, the time limit of one year referred to in subparagraph (a) is replaced by 18 months. (c) Such declaration may also specify that, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified by the Office of the said Contracting Party to the International Bureau after the expiry of the 18 month time limit. … … (5) Any Office which has not notified, with respect to a given international registration, any provisional or final refusal to the International Bureau in accordance with paragraphs (1) and (2) shall, with respect to that international registration, lose the benefit of the right provided for in paragraph (1). …”
“Article 151 Effects of international registrations designating the Union 1. An international registration designating the Union shall, from the date of its registration pursuant to Article 3(4) of the Madrid Protocol or from the date of the subsequent designation of the Union pursuant to Article 3ter(2) of the Madrid Protocol, have the same effect as an application for a Community trade mark. 2. If no refusal has been notified in accordance with Article 5(1) and (2) of the Madrid Protocol or if any such refusal has been withdrawn, the international registration of a mark designating the Union shall, from the date referred to in paragraph 1, have the same effect as the registration of a mark as an EU trade mark. 3. For the purposes of applying Article 9(3), publication of the particulars of the international registration designating the Union pursuant to Article 152(1) shall take the place of publication of an EU trade mark application, and publication pursuant to Article 152(2) shall take the place of publication of the registration of an EU trade mark. Article 152 Publication 1. The Office shall publish the date of registration of a mark designating the Union pursuant to Article 3(4) of the Madrid Protocol or the date of the subsequent designation of the Union pursuant to Article 3ter(2) of the Madrid Protocol, … the number of the international registration and the date of publication of such registration in the Gazette published by the International Bureau …. 2. If no refusal of protection of an international registration designating the Union has been notified in accordance with Article 5(1) and (2) of the Madrid Protocol or if any such refusal has been withdrawn, the Office shall publish this fact, together with the number of the international registration and, where applicable, the date of publication of such registration in the Gazette published by the International Bureau. Article 160 Use of a mark subject of an international registration For the purposes of applying Article 15(1), Article 42(2), Article 51(1)(a) and Article 57(2), the date of publication pursuant to Article 152(2) shall take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the Union must be put to genuine use in the Union.”
“No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act affects the law relating to passing off.”