Combe International LLC & Anor v Dr August Wolff GmbH & Co KG Arzneimittel & Anor [2022] EWCA Civ 1562 (30 November 2022)

Combe International LLC & Anor v Dr August Wolff GmbH & Co KG Arzneimittel & Anor [2022] EWCA Civ 1562 (30 November 2022)

The Court of Appeal held that Combe's cancellation action did not interrupt the period of acquiescence because it did not constitute action to oppose the use of the later trade mark, only its registration. The relevant use by the defendants was sufficient to trigger the acquiescence defence, but Combe was not aware of the use for a period during 2015 and 2016, so the five-year period of acquiescence was not established. Therefore, the defendants' section 48(1) defence failed. The other grounds of appeal were not upheld.

Citation
[2022] EWCA Civ 1562
Parties
Claimant/respondent: Combe International LLC; Claimant/respondent: Combe International Limited; Defendant/appellant: Dr August Wolff GmbH & Co KG Arzneimittel; Defendant/appellant: ACDOCO Limited
Jurisdiction
England and Wales
Judgment Date
30 November 2022
Procedural Posture
Appeal / Court of Appeal Judgment on Appeal From High Court
Outcome
Appeal dismissed
Legal Topics
Trade Marks, Infringement, Acquiescence, Likelihood of Confusion, Defences to Infringement
Intellectual Property Trade Marks Infringement Acquiescence Likelihood of Confusion Defences to Infringement

Case Brief

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Parties

Combe International LLC

Claimant/respondent

Combe International Limited

Claimant/respondent

Dr August Wolff GmbH & Co KG Arzneimittel

Defendant/appellant

ACDOCO Limited

Defendant/appellant

Procedural Posture

Appeal / Court of Appeal Judgment on Appeal From High Court

Legal Issues

  1. 1 Whether the claimants acquiesced in the use of the defendants' trade mark under section 48(1) of the Trade Marks Act 1994
  2. 2 Whether the defendants have a defence to infringement under section 11(1) of the Trade Marks Act 1994
  3. 3 Whether the use of DR WOLFF'S VAGISAN gives rise to a likelihood of confusion

Ratio Decidendi

The Court of Appeal held that Combe's cancellation action did not interrupt the period of acquiescence because it did not constitute action to oppose the use of the later trade mark, only its registration. The relevant use by the defendants was sufficient to trigger the acquiescence defence, but Combe was not aware of the use for a period during 2015 and 2016, so the five-year period of acquiescence was not established. Therefore, the defendants' section 48(1) defence failed. The other grounds of appeal were not upheld.

Court Disposition

Appeal dismissed

Orders

  • Injunction against the defendants maintained
  • Order for delivery up of infringing goods maintained