Industrial Cleaning Equipment (Southampton) Limited v Intelligent Cleaning Equipment Holdings Co Ltd & Anor

Industrial Cleaning Equipment (Southampton) Limited v Intelligent Cleaning Equipment Holdings Co Ltd & Anor

The five-year period for statutory acquiescence under section 48 of the Trade Marks Act 1994 and corresponding EU provisions begins when the later trade mark is in fact registered and the proprietor of the earlier trade mark is aware of the use of the later trade mark, regardless of knowledge of registration. For international trade marks protected in the EU, the relevant registration date is the date of acceptance or second republication by EUIPO, not the international registration date. The appeal was dismissed because the claim form was issued on the last day of the five-year period, thus preventing the limitation bar from arising.

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
11 October 2024
Procedural Posture
Civil Appeal / Appeal From High Court (ipec) to Court of Appeal
Outcome
Appeal dismissed
Legal Topics
Trade Marks, Statutory Acquiescence, Passing Off, Limitation Periods
Intellectual Property Law Trade Marks Statutory Acquiescence Passing Off Limitation Periods

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Parties

Industrial Cleaning Equipment (Southampton) Limited

Claimant/respondent

Intelligent Cleaning Equipment Holdings Co Ltd

First Defendant/appellant

Killis Limited

Fourth Defendant/appellant

Procedural Posture

Civil Appeal / Appeal From High Court (ipec) to Court of Appeal

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 the registration of the later trade mark required for time to run under statutory acquiescence?
  3. 3 What is the relevant registration date for an international trade mark protected in the EU for limitation by acquiescence?

Ratio Decidendi

The five-year period for statutory acquiescence under section 48 of the Trade Marks Act 1994 and corresponding EU provisions begins when the later trade mark is in fact registered and the proprietor of the earlier trade mark is aware of the use of the later trade mark, regardless of knowledge of registration. For international trade marks protected in the EU, the relevant registration date is the date of acceptance or second republication by EUIPO, not the international registration date. The appeal was dismissed because the claim form was issued on the last day of the five-year period, thus preventing the limitation bar from arising.

Court Disposition

Appeal dismissed

Orders

  • The appeal is dismissed; the judgment of the High Court is upheld.