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  • Writer's pictureRosie Burbidge

When will the English Court of Appeal depart from EU law on trade marks?

The Court of Appeal has provided clarity on when the proprietor of an earlier IP right can challenge the registration or use of a later trade mark, in a case concerning the use of the acronym ICE. The judgment included an analysis of when it is appropriate for the Court to depart from retained EU case law.

The dispute concerned a claim brought by Industrial Cleaning Equipment against Intelligent Cleaning Equipment Company and its UK distributors.

The former company dates back to 1967 and has used the logo (pictured top) since 2007; it applied to register this logo as a UK trade mark on 23 October 2015. The latter owns two International Trademarks, which were registered at WIPO on 18 June 2015 and accepted by EUIPO on 24 May and 14 June 2016 respectively. It uses the logo pictured below.

The claim was brought in 2021. In February 2023, Her Honour Judge Melissa Clarke found that, if the claimant’s mark was valid, then it was infringed and the defendants’ trade marks were invalid.

She rejected the defendants’ defence of statutory acquiescence. Applying the CJEU judgment in Budvar, she found that the claimant first became aware of the defendants’ marks in July 2019, and the claim form had therefore been issued within the five-year period required for acquiescence.

The five-year period

In his judgment, Lord Justice Arnold said there was a conflict between the CJEU judgment in Budvar on one hand and the case law of the EUIPO Boards of Appeal and EU General Court on the other hand regarding whether the five-year period starts from awareness of use or from registration of the later mark. He concluded that:

“the legislation should be interpreted as meaning that the five year period starts to run once the proprietor of the earlier trade mark becomes aware of the use of the later trade mark, and the later trade mark is in fact registered, whether or not the proprietor of the earlier trade mark is aware of the registration of the later trade mark.”

This interpretation required the Court of Appeal to depart from retained EU case law. Noting that this power should be exercised with great caution, Arnold LJ nevertheless concluded that the Court should depart from Budvar. Lord Justice Nugee agreed, saying:

“not only is there an alternative reading available, but there does appear to be a divergence (surprising as this may seem to our eyes) between on the one hand the approach adopted by the OHIM/EUIPO and the General Court in Ghibli and later cases, and on the other the position of the Court of Justice in Budvar which suggests that the question is not regarded as settled at European level; and the wider context, the objectives of the legislation and practical considerations all suggest that the better view is that the proprietor of the earlier right need only be aware of the use of the later mark, not of the fact of its registration.”

Registration date

The Court also had to determine what is the relevant registration date of an International mark protected in the EU. Arnold LJ reasoned that it is either the date on which the International mark is accepted by EUIPO or the second republication date. In either case, the claim in this case was issued within the five-year period.

Therefore, although the defendants succeeded on the first ground, they did not succeed on the second – and the appeal was dismissed.

Finally, Arnold LJ concluded that if statutory acquiescence had been made out, it would bar the passing off claim as well as the trade mark infringement claim. The first instance judge had not determined the passing off claim, so if the claimants wanted to pursue that then the question should be remitted to her.

What does this mean?

As the number of trade marks continues to increase, conflicts between marks are more common and this judgment provides useful clarity on when and how acquiescence is assessed.

Equally importantly, it offers some insight into when the courts will depart from retained EU case law. Following Brexit, the Supreme Court and Court of Appeal have this power – but as the judges in this case made clear, they will likely only do so in exceptional cases and where there are powerful reasons (such as conflicting EU case law).

As it turned out, departing from retained EU case law did not change the outcome of this dispute, but over time it is clear that the EU and UK systems will gradually diverge.

For more information about the impact of Brexit and the differences between EU and UK trade mark law, please contact us.

To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London -



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