Resources

Important Court of Appeal decision on trade mark law

News & Judgments
1 December 2022

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.

Related areas

Related People

Theo Barclay

Call: 2013

Search

Tags

Expertise

Popular resources

Stay of proceedings before serving a claim form


What should claimants do when limitation is about to expire? Noting…

Discover more

Four Fundamentals of Limitation Periods in Contract and Tort Claims


By Carl Troman, Barrister and Mediator at 4 New Square Four key points…

Discover more

Unfair Prejudice Petitions: what makes prejudice “unfair”?


Unfairness is an essential ingredient in minority shareholder petitions. Prejudice alone is not enough….

Discover more

If you would like to know more or have a question please talk to our clerks

Portfolio Builder

Select the expertise that you would like to download or add to the portfolio

Download    Add to portfolio   
Portfolio
Title Type CV Email

Remove All

Download


Click here to share this shortlist.
(It will expire after 30 days.)