Combe International v Dr August Wolff [2022] EWCA Civ 1562

30 November 2022

Tom Moody-Stuart KC, instructed for the first time on appeal, and Ashton Chantrielle, appeared for Dr Wolff in the appeal of a trade mark infringement and passing off case relating to female intimate care products, in which the Court of Appeal reshaped the law on the statutory acquiescence defence under s48(1) of the Trade Marks Act 1994.

Dr Wolff successfully persuaded the Court that the Trial Judge had been wrong on the interpretation of s48(1). Arnold LJ, approving Dr Wolff’s interpretation, held that:

(1) The bringing of a cancellation action against a later mark, without the bringing of infringement proceedings, is not sufficient to preclude acquiescence.

(2) Context is incapable of, as a matter of law, turning a cancellation action into something that amounts to opposing use of the later trade mark.

(3) There is no requirement of continuous use, only continued use, for five years, which is a fact-sensitive question.

(4) There is no requirement that the use must be genuine or on a commercial scale; it is sufficient that the use is infringing.

This case is now the leading case on statutory acquiescence in trade mark law.

The appeal was ultimately dismissed on the factual findings made below.

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