Brussels Commercial Court Clarifies Start of Period of Acquiescence and Finds Trade Mark Infringement

• 31/07/2017
• Articles

On 31 July 2017, the Commercial Court of Brussels (Rechtbank van Koophandel/Tribunal de Commerce) (the “Court") handed down a judgment in relation to the alleged acquiescence by a trade mark holder in the use of its trade marks by a third party. 

Merck Sharp & Dohme (“Merck”) had brought actions against MSD Europe (“MSD”) for the infringement of its Benelux and EU trade marks. MSD argued that its use, in its business name and domain name, of several trade marks similar and identical to the registered trade marks of Merck did not infringe the latter’s trade marks as Merck had acquiesced in the use of its trade marks by MSD. MSD relied on Article 54 of the European Union Trademark Regulation (Regulation (EU) 2015/2424, the “EUTMR”) and Article 2.24 of the Benelux Convention on Intellectual Property (the “BCIP”) in that respect. Both provisions state that the holder of a trade mark who has acquiesced for five successive years in the use of a later trade mark, while being aware of that use, can no longer apply for a declaration that the later trade mark is invalid, unless the registration of the later trade mark was applied for in bad faith.

Assessing MSD’s position, the Court first pointed out that MSD did not prove that Merck had acquiesced in the use of its registered trade marks. Indeed, although Merck knew that MSD was using signs similar to its trade marks, it was unaware that these signs had been registered by MSD as trade marks. The Court noted in that regard that the period of acquiescence only starts as from the moment the trade mark holder is aware of the use of a registered similar or identical later trade mark. The mere acknowledgment of the use of a sign before the registration of the later trade mark is not relevant.

Second, the Court held that the opposition of Merck in 2008 against the registration by MSD of the trade mark in question concerning goods in trade mark class 10 clearly indicated that there was no acquiescence by Merck to such registration.

Lastly, the Court held that the alleged infringer bears the burden of proof in establishing the acknowledgement of the trade mark holder in a possible infringing use of its trade mark.

The Court concluded that MSD’s use of Merck’s trade mark infringed Merck’s rights pursuant to Article 2.20.1.c) BCIP and Article 9.2.c) EUTMR.