Court of Appeal Rules on Statutory Acquiescence and International Trade Mark Registrations in ICE v Intelligent Cleaning Equipment: Implications for EU Trade Mark Disputes

Introduction

The Court of Appeal’s decision in Industrial Cleaning Equipment (Southampton) Limited v Intelligent Cleaning Equipment Holdings Co Ltd & Anor is a notable case that grapples with two central issues: the limitation by acquiescence under the Trade Marks Act 1994 and the complexities of international trade mark registrations within the EU framework. This article dissects the legal principles at play, offering a concise overview of the judgment and its implications for practitioners.

Key Facts

Two entities utilized the acronym ICE—Industrial Cleaning Equipment and Intelligent Cleaning Equipment—leading to a trade mark dispute. The defendants appealed against a High Court decision which granted the claimant relief for trade mark infringement and dismissed the defendants’ counterclaims. The appeal hinged upon the interpretation of statutory acquiescence, pertaining to the proprietor of an earlier trade mark’s awareness of a later trade mark’s use and registration; and the registration date for the purposes of an international trade mark protected in the EU.

Legal Principles

Statutory Acquiescence

The court exhaustively examined statutory acquiescence, focusing on two pivotal elements: the requirement for the earlier trade mark proprietor to be aware of the later trade mark’s use and its registration, and when the five-year period for acquiescence begins.

The court deliberated over the case law, with special regard to the Court of Justice of the European Union (CJEU) decision in Budvar, which necessitated an awareness of registration as well as use. Challenging Budvar, the court concluded that such awareness need only pertain to the use of the later trade mark, and not its registration, deeming it the more coherent interpretation aligned with the objectives of the legislation.

International Trade Mark Registration

For the registration of an international trade mark protected in the EU, the court dissected the linkage between the Madrid Protocol’s framework and EU regulations, concluding that the registration process in the EU must be completed for the international registration date to be effective, thereby influencing when the five-year acquiescence period commences.

Outcomes

The court’s in-depth analysis resulted in a dismissal of the appeal, based on the timing of the claim form issue fulfilling the five-year limit set by statutory acquiescence. Notably, the court deviated from the CJEU precedent in Budvar, a move underscored by discretion granted post-Brexit to diverge from retained EU case law under specific conditions.

Conclusion

The court’s meticulous dissection of legal principles establishes a precedent whereby the awareness of use, not registration, triggers the start of the acquiescence period. This marks a significant departure from Budvar, realigning the focus squarely on market conduct. Additionally, the case offers clarity on the treatment of international trade marks in the EU, aligning the Madrid Protocol with EU registration processes. The ruling reinforces the requirement for trade mark proprietors to vigilantly monitor the marketplace and registration databases, upholding legal certainty and reinforcing the incentive structure designed to stimulate proactive protection of trade mark rights.