Acquiescence in Trademark Law: How to Prevent Losing Your Trademark Rights
Learn how the legal mechanism of acquiescence can lead to the loss of your trademark rights and what legal strategies you can adopt to avoid it.
Introduction: An Overlooked Legal Threat
Registering a trademark is not enough to ensure its long-term protection. Inaction in the face of a competing use can, in some cases, backfire against the trademark owner. The mechanism of acquiescence — still largely underestimated — exposes owners to the permanent loss of their trademark rights, even when their prior rights are undisputed.
This article explores the legal foundations of acquiescence, supported by major EU case law, and outlines best practices to help trademark owners prevent this irreversible outcome.
What Is Acquiescence in Trademark Law?
Acquiescence is governed by Article 61 of the European Union Trademark Regulation (EUTMR). It provides that:
“Where the proprietor of an EU trademark has knowingly tolerated the use of a later trademark for a continuous period of five years, they can no longer seek invalidation of that trademark or bring infringement proceedings.”
The mechanism is based on four cumulative conditions:
- Actual knowledge of the use of the later mark;
- Uninterrupted use for five years;
- Good faith registration and use of the later mark;
- No legal or administrative action taken during that period.
This means that even a properly registered earlier mark can lose its legal enforceability if the owner fails to act within five years.
Key Case Law: When Tolerance Is Sanctioned
European case law has clarified the scope of Article 61 EUTMR, especially the concept of “knowledge.”
In CJEU Case C-381/12 P, the Court of Justice of the European Union held that the knowledge must be actual and demonstrable, not presumed.
In General Court Case T-150/17, the court confirmed that only concrete and provable knowledge triggers the five-year period of acquiescence.
Another critical point: in CJEU Case C-482/09, the court stated that sending a cease-and-desist letter is not enough to interrupt the five-year period. Only formal legal actions opposition, invalidity proceedings, or infringement lawsuits — can stop the clock.
Legal and Strategic Risks: What’s at Stake?
The consequences of acquiescence are far-reaching:
- Irrevocable loss of the right to oppose or cancel the later trademark;
- Forced coexistence of two potentially conflicting marks;
- Weakened legal protection, especially in future disputes;
- Market confusion and dilution of commercial value.
For businesses, the fallout can include:
- Loss of exclusivity for key products or services;
- Damage to brand image and distinctiveness;
- Waste of marketing and advertising investments tied to the trademark.
Prevention Strategy: How to Actively Defend Your Trademark
To avoid falling into the trap of acquiescence, here are some best practices every company should adopt:
✅ Implement continuous monitoring of third-party trademark filings via specialized tools or IP watch services.
✅ Keep evidence of any knowledge of conflicting use: screenshots, emails, bailiff reports, commercial exchanges, etc.
✅ React promptly to infringing or confusing uses: oppositions, cancellation actions, or infringement lawsuits.
Conclusion: Inaction Is No Longer an Option
Acquiescence is a codified legal mechanism that can undo years of legal and branding efforts. Too often overlooked, it proves that registering a trademark is only the beginning of an ongoing protection strategy.
In a world where intangible assets are strategic, vigilance and swift legal action are the only ways to ensure lasting brand protection.
