On 30 November 2022 the Court of Appeal handed down judgment in Combe & Ors v Wolff & Ors [2022] EWCA Civ 1562. The Court of Appeal’s decision is now the leading case on two separate statutory defences to trade mark infringement.
The Court gave guidance on the 5 year limitation period at section 48 Trade Marks Act 1994. Endorsing the non-binding views that the Court of Justice of the European Union set out in May 2022 in HEITEC v HEITECH (Case C-466/20), the Court held that a party ceases to acquiesce in the use of an infringing trade mark when it issues infringement proceedings before the 5-year limitation period expires, or shortly after if they are preceded by serious, credible threats of proceedings.
The Court of Appeal also clarified the proper construction of the ‘later registered trade mark’ defence at section 11 Trade Marks Act 1994, rejecting the Appellants’ contention that merely owning a later registered trade mark grants a defence.
4 New Square Chambers’ Theo Barclay was junior counsel for the Respondents, who succeeded at first instance and on appeal.
