In matters of trademark law, the limitation in consequence of acquiescence is an end of non-receipt provided by the law in the following articles:

• Article 716-2-8 of the Intellectual Property Code concerning trademarknullity actions:

” The owner of a prior right who has tolerated for a period of five consecutive years the use of a later trademark registered with knowledge of such use shall no longer be entitled to request the invalidation of the later trademark on the basis of Article L. 711-3, for the goods or services for which the use of the trademark was tolerated, unless the registration of the trademark was requested in bad faith. ” ;

• Article 716-4-5 of the Intellectual Property Code regarding theinfringement action:

“Any action for infringement brought by the owner of an earlier trademark against a later trademark shall be inadmissible:

(1) Where the owner of the earlier trademark has tolerated for a period of five consecutive years the use of the later trademark with knowledge of such use and in respect of the goods or services for which the use was tolerated, unless its filing was made in bad faith.”

Thus, the limitation in consequence of acquiescence. sanctions the inaction of the trademark owner when the following four conditions are met:

• The later trademark is registered;
• The owner of the later trademark was in good faith at the time of filing;
• The later trademark is actually used in the territory for which the earlier trademark is protected;
• The owner of the earlier trademark is actually aware of this exploitation and has tolerated it for a consecutive period of 5 years.

In practice, when peremptory foreclosure is invoked as a defense to a trademark invalidity action or an infringement action, the main difficulty for the defendant is to establish that the plaintiff is aware of the exploitation of the litigious trademark and especially since when.

Thus, the case law does not necessarily condition the application of limitation in consequence of acquiescence. on material proof of actual knowledge of the exploitation.

In some cases, the case law has been able to recognize the existence of a tolerance in circumstances that lead to consider that the owner of the earlier trademark could not ignore the exploitation of the later trademark (Cass. com., July 5, 2016, n°14-18.540) :

“the documents submitted to the court show that, since 2000, the “Ainhoa” trademark has been advertised in numerous and regular intervals in various countries of the European Union and, in particular, in French magazines, and that it is established that the said trademark and the trademarks of L’Oréal have been promoted in the same French, Italian and Spanish publications, sometimes in the same issue, such as an Italian magazine of September 2003 and a Spanish magazine of November 2009; that it also notes that the programs of the various international trade shows held since 2001, in particular a show organized in Madrid in 2004, justify the presentation by Cosmetica Cabinas of “Ainhoa” products and the participation of L’Oréal in these same shows; that it adds, finally, that these companies have both been members, since 2006, of the same Spanish association of perfumes and cosmetics; that, in light of these findings and sovereign assessments, which it deduced that L’Oréal had necessarily been aware, for more than five years as of the date of the infringement suit, of the use by Cosmetica Cabinas of the “Ainhoa” trademark for products in class 3, the Court of Appeal, which ruled on grounds capable of characterizing both a use of the trademark by its owner in different countries of the European Union, including France, in a regular manner since its registration, and, as regards two companies in a competitive situation, the knowledge of this use with a sufficient degree of certainty by the owner of the earlier trademark, has legally justified its decision”.

The foregoing reflects the fundamental importance to trademark owners of :

• Implement trademark monitoring to identify identical or similar third-party trademark registrations;
• To act quickly and effectively against such filings in order to avoid the registration of the litigious trademark, as well as its exploitation.

For this, it is recommended to be assisted by a lawyer specializing in litigation and pre-litigation procedures and/or a counsel in intellectual property (IPC), in particular to know the limitation periods of an action, the defenses that can be raised against his opponent, the opportunity of an amicable settlement etc…

Update on the European Union Trademark

The principle of limitation in consequence of acquiescence is provided for in Regulation (EU) No. 2017/1001 on the European Union trademark, in Article 61 :

“The proprietor of an EU trademark who has tolerated for five consecutive years the use of a later EU trademark in the Union with knowledge of such use may no longer request the invalidity of the later trademark on the basis of the earlier trademark for the goods or services for which the later trademark has been used, unless the registration of the later EU trademark was made in bad faith.”

Point of jurisprudence

The period of limitation runs from the knowledge of the exploitation of the later trademark.

“It is the knowledge of the use of the trademark that must have been tolerated during 5 years to cause the foreclosure of the action for invalidity or the inadmissibility of the action for infringement. Therefore, the starting point of these time limits cannot be the publication of the application for registration of the trademark, nor even its grant, but must be assessed, in the case in point, by the knowledge of the actual use of the second trademark.” (Cour d’appel de Paris , November 17, 2017, No. 16-20.736).

The Bouchara Law firm assists you in particular in :

• Protection of your trademark;
• Monitoring your brands;
• The defense of your trademark rights in the context of pre-litigation or litigation actions and in particular: infringement actions, infringement proceedings, trademark nullity proceedings ;
• More generally, the protection and defense of your intellectual property assets(trademarks, designs, creations and works protected by copyright, domain names etc…) before the Offices(INPI, EUIPO, WIPO etc…) and the Courts;
• The defense of your trademark rights in the context of any pre-litigation or litigation action and in particular: infringement action, trademark nullity action.