Industrial Cleaning Equipment (Southampton) Ltd v Intelligent Cleaning Equipment Holdings Co Ltd & Anor [2023] EWCA Civ 1451 (06 December 2023)

Industrial Cleaning Equipment (Southampton) Ltd v Intelligent Cleaning Equipment Holdings Co Ltd & Anor [2023] EWCA Civ 1451 (06 December 2023)

The five-year period for statutory acquiescence under section 48 of the Trade Marks Act 1994 and corresponding EU provisions begins only when the proprietor of the earlier trade mark has knowledge of both the use and the registration of the later trade mark. This interpretation is required by the binding authority of Budvar and is consistent with the objectives of legal certainty and fairness. The Defendants' appeal fails because the Claimant did not have the requisite knowledge of registration until July 2019, and proceedings were commenced within five years of that date.

Citation
[2023] EWCA Civ 1451
Parties
Claimant/respondent: Industrial Cleaning Equipment (Southampton) Limited; First Defendant/appellant: Intelligent Cleaning Equipment Holdings Co Ltd; Fourth Defendant/appellant: Killis Limited
Jurisdiction
England and Wales
Judgment Date
06 December 2023
Procedural Posture
Appeal (civil) / Court of Appeal Judgment on Appeal From High Court (ipec)
Outcome
Appeal dismissed
Legal Topics
Trade Mark Infringement, Statutory Acquiescence, Limitation Periods, Passing Off
Intellectual Property Law Trade Mark Infringement Statutory Acquiescence Limitation Periods Passing Off

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 3 Authorities cited 13 Party arguments 2
Sign in to unlock

Parties

Industrial Cleaning Equipment (Southampton) Limited

Claimant/respondent

Intelligent Cleaning Equipment Holdings Co Ltd

First Defendant/appellant

Killis Limited

Fourth Defendant/appellant

Procedural Posture

Appeal (civil) / Court of Appeal Judgment on Appeal From High Court (ipec)

Legal Issues

  1. 1 When does the five-year period for statutory acquiescence under section 48 of the Trade Marks Act 1994 and corresponding EU provisions begin to run?
  2. 2 Is knowledge of both use and registration of the later trade mark required for time to run under statutory acquiescence?

Ratio Decidendi

The five-year period for statutory acquiescence under section 48 of the Trade Marks Act 1994 and corresponding EU provisions begins only when the proprietor of the earlier trade mark has knowledge of both the use and the registration of the later trade mark. This interpretation is required by the binding authority of Budvar and is consistent with the objectives of legal certainty and fairness. The Defendants' appeal fails because the Claimant did not have the requisite knowledge of registration until July 2019, and proceedings were commenced within five years of that date.

Court Disposition

Appeal dismissed

Orders

  • The appeal is dismissed.
  • The order of the High Court (IPEC) is affirmed.