Limitation in concept of acquiescence is inexorably caused by the expiry of the five-year period, except where the proprietor of the earlier trade mark requests the invalidity of the later trade mark before the competent judicial or administrative body or in the event of waiver of the request for invalidity as a result of a coexistence agreement with the proprietor of the later trade mark.

The judgment of the Court of Justice states the following doctrine:

“an act, such as an sending a warning letter, by which the proprietor of an earlier trade mark or other earlier right opposes the use of a later trade mark without, however, taking the necessary steps to obtain a legally binding solution does not put an end to the acquiescence and therefore does not interrupt the limitation period”.

Nor does the limitation period interrupt ‘the bringing of an action by which the proprietor of an earlier trade mark or other earlier right applies for a declaration that a later trade mark is invalid or opposes its use, where the statement of claim, even if filed before the date of expiry of the limitation period, does not, through lack of diligence on the part of the plaintiff, comply with the requirements of the applicable national law for service and is regularised after that date only for reasons attributable to the plaintiff’.

“where the proprietor of an earlier trade mark or of another earlier right within the meaning of those provisions has forfeited his right to apply for a declaration of invalidity of a later trade mark and to apply for cessation of use of that trade mark, that forfeiture also precludes him from bringing subsequent or related actions, such as actions for damages, for the provision of information or for the destruction of goods”.

JUDGMENT OF THE COURT of 19 May 2022 HEITEC AG V. HEITECH Promotion GmbH, Case C-466/20