Conscious acquiescence: The dangers of ignoring trademark infringement  

If your trademark-watching service identifies a trademark application that potentially infringes your existing rights, it’s important to consider your options carefully, says Noé Himmelreich. If you consider the applicant or use “low risk” and choose to tolerate it, you could find your rights impacted in the long term on the grounds of conscious acquiescence. 

Trademark watching services will alert you to any new application that may infringe on your prior trademark rights; for example, younger trademark applications that are confusingly similar to your existing brand name which is registered for the same or similar goods or services. While you should actively oppose any high-risk third-party applications, you may decide to take a different strategy for “low risk” applications for time and budgetary reasons. For example, you could write to the applicant instead to notify them of the conflict and request they withdraw their application and discontinue the mark’s use.   

But what happens if they do not respond? Unfortunately, if you decide not to take further action, you could be damaging your rights later down the line. While the other party's use of the mark may not be extensive today, it may have increased considerably in five or six years. Should you try to take infringement action at that point, they could challenge your ability to object on the basis that you tolerated its use by not taking timely legal action previously. 

Tolerance and conscious acquiescence in the EU 

Under EU and the national trademark law of EU member states, trademark owners have the right to take action against the use, application or registration of a younger identical or similar trademark. However, this right may lapse if you have knowingly tolerated the use of a younger registered trademark for a period of five consecutive years. 
 
This tolerance must be conscious. In other words, it does not mean that if you missed the publication of the trademark application – and so were not aware of the trademark’s registration or use – that you had consciously acquiesced to it. 
 
Instead, conscious acquiescence is assumed from the moment you informed the other party of your objection or if another party can demonstrate you knew of its existence; for example, if you have a neighbouring shop or have appeared next to each other at a trade fair with your trademark-protected goods or services. 

From that moment of objection or knowledge, you must initiate administrative proceedings before the trademark authority or launch legal infringement proceedings within five years. Merely sending cease and desist letters, reminders or notices of default does not interrupt the period, because it is not considered reasonable or fair to continue to invoke your right at any time without seeking a legal decision, since it would lead to legal uncertainty for the parties involved.  

Consequences of conscious acquiescence and forfeiture of rights 

If you have knowingly tolerated the use of a more recently registered trademark for more than five years: 

• Your right to have the younger trademark removed from the trademark register by means of a cancellation action will lapse; 
• You will no longer have the right to prohibit the use of the younger trademark in infringement proceedings; and 
• You can no longer file ancillary claims – for example, claims for damages or the destruction of infringing goods. 

However, you do not lose your prior registration because your right to object has passed, meaning the holder of the younger trademark cannot take action against its use. This leads to the often-undesirable situation in which you are forced to coexist with each other, which can lead to customer confusion and have a negative impact on the value of your trademarks. 
 
Note: An exception to this rule applies if it can be shown that the later trademark was registered in bad faith. In such cases, the period of limitation of rights by conscious acquiescence does not apply, and it will still be possible to seek cancellation of the younger trademark registration on the grounds of invalidity due to bad faith on the part of the applicant. 

How and when to act against “low risk” conflicts 

It is important to act against all forms of trademark infringement, including lower-risk conflicts. When conflicts are identified and cease-and-desist letters are issued, be sure to monitor them proactively. For example, by following them up with administrative or legal proceedings if you cannot reach an amicable agreement with the other party.  

This will prevent you from losing your right to object in the long run and, in the worst-case scenario, being forced to co-exist with the younger trademark. 
 
Novagraaf’s trademark watching and online brand protection solutions can support you to identify, act and track infringements of your rights. We combine intelligent monitoring software with strategic legal advice to facilitate and automate infringement actions. To find out more, speak to your Novagraaf attorney or contact us below. 

Noé Himmelreich is an IP Associate at Novagraaf in Amsterdam.