The Risk of Not Enforcing Your Trade Marks

In a perfect world brand owners could register their trade mark and trade on into the sunset. Unfortunately, this is often not the case. The recent ruling by the European General Court underscores the significant risks of not actively enforcing your trade marks.

In the case before the European General Court, Grande Vitae GmbH applied to cancel the “Vintae” trade mark owned by Vintae Luxury Wine Specialists SLU, based on its earlier “Vitae” registration. In is defence, Vintae claimed that Grande acquiesced to its use, as the trade marks had been co-existing for 12 years before the invalidation application was launched.

The law of acquiescence states that the owner of the earlier trade mark must of acquiesced for a period of five successive years, to the use of a later registered EU trade mark in the Member State where the earlier trade mark is protected. Most importantly, the owner of the earlier trade mark must be aware of the use of the later mark after its registration and the later application must have been made in good faith. These conditions apply where the later trade mark used, is identical or confusingly similar to the earlier trade mark.

In this case, acquiescence depended on whether Vintae could prove that Grande had actual knowledge of the use of the later mark. This was an obstacle it could not overcome, and the cancellation application succeeded.

Why Active Enforcement of Your Trade Mark is Crucial

The Court’s decision provides an important reminder that prolonged inaction or acquiescence in the use of a trade mark by another party can serve as a defence in trade mark cancellation proceedings. If a trade mark owner does not take action to oppose or challenge the use of a conflicting mark within a reasonable timeframe, it could be deemed to have accepted that use, potentially jeopardizing their rights.

Here are several reasons why it is essential to vigilantly monitor and enforce your trade mark rights:

1. Preservation of Exclusive Rights: By failing to enforce your trade mark, you risk weakening your exclusive rights to it. The trade mark system is designed to protect brands from dilution and infringement, but only if the rights holder takes an active role in safeguarding those rights.

1. Risk of Losing Your Trade Mark: If a third party challenges your trade mark, and you have acquiesced in their use (e.g., by failing to object or take any legal action over an extended period), this could result in the cancellation of your trade mark.

1. Establishing Brand Integrity: Regularly enforcing your trade marks reinforces your brand’s integrity and your control over its use. This not only prevents unauthorized use or infringement but also signals to the market that your brand is protected and that customers can rely on your trade marks as a badge of origin.

1. Avoiding Uncertainty and Costly Litigation: By actively enforcing your trade marks, you reduce the likelihood of protracted legal disputes. Proactively addressing potential infringements or conflicts early on can help you avoid complex and expensive litigation later.

1. Strengthening Your Position in Disputes: If you’ve consistently enforced your trade mark rights, you are in a stronger position to defend them in court. The courts may be less likely to accept claims of acquiescence if you have demonstrated an active interest in protecting your trade marks over time.

How can Reddy Charlton help?

Reddy Charlton Solicitors advise clients on intellectual property portfolio management and enforcement, having considerable experience and a number of experts in the area. If you have any queries or seek further information on trade mark enforcement or any other area of intellectual property law, please contact Clare Snaddon at csnaddon@reddycharlton.ie