Mind the Gap: When a trade mark vanishes temporarily, does the clock of acquiescence stop ticking?

[Marcel Pemsel]

Mind the Gap: When a trade mark vanishes temporarily, does the clock of acquiescence stop ticking?

Marcel Pemsel Tuesday, January 13, 2026 - acquiescence, C-693/25, CJEU reference, Marcel Pemsel, MPM-Quality, statute of limitations

In a recent reference for a preliminary ruling (MPM-QUALITY, C-693/25), the Municipal Court in Prague has asked the Court of Justice of the European Union (CJEU) to clarify when, and under what circumstances, the five-year period of acquiescence under EU trade mark law may be interrupted or even restart. 

Background

The claimant, MPM-QUALITY, owns Czech trade mark   , registered since 2001, inter alia, for “clocks, watches, timekeeping devices”. It enjoys a priority from 1984.

The defendant, ELTON, has been using “PRIM” (presumably for watches) since the 1960s. The parties argue about whether this use can be attributed to the defendant. The latter obtained registration of EU trade mark (EUTM)for “watchmaking” and “watches for children” in 2005 after filing for registration in 2003.

The Czech Republic joined the EU on 1 May 2004.

The claimant brought an infringement action against the defendant regarding the use of “PRIM” on 29 April 2009.

In 2014, the Industrial Property Office of the Czech Republic declared the claimant’s mark, on which its action was based, to be invalid. The mark was removed from the register.

In 2015, the claimant’s infringement action was dismissed with final effect due to the cancellation of the claimant’s trade mark.

The claimant brought administrative proceedings against the cancellation of its trade mark. By final judgment of 23 November 2020, the Czech Supreme Administrative Court annulled the decision of the Industrial Property Office, which led to the renewal of the mark and its re-entry into the register.

The claimant brought a new action on 8 February 2021, which is the subject matter of the reference, before the Municipal Court in Prague (the referring court).

The questions of the referring court

1. What interrupts the five-year period for acquiescence?

First, the referring court addressed the five-year period for acquiescence, which might have expired between the date of dismissal of the claimant’s first action in 2015 and the new action in 2021. 

The judges explained the legal starting situation:

According to Art. 209(1) EUTMR, as of the date of accession of new states to the EU, an already filed or registered EU trade mark extends to the territory of the new Member State in order to have equal effect throughout the EU.

Under Art. 209(5) EUTMR, the use of a later EU trade mark may be prohibited pursuant to Art. 137 and 138 EUTMR, if the earlier trade mark or other earlier right was registered, applied for or acquired in good faith in the new Member State prior to its date of accession.

In accordance with Art. 137(1) EUTMR, the EUTMR does not affect infringement claims based on earlier rights within the meaning of Art. 8 or Art. 60(2) EUTMR in relation to the use of a later EUTM. Claims for infringement of earlier rights within the meaning of Art. 8(2) and (4) EUTMR (which include earlier national trade marks) may, however, no longer be invoked in the case of acquiescence under Art. 61(2) EUTMR.

Art. 61(2) EUTMR states that where the proprietor of an earlier national trade mark has acquiesced, for a period of five successive years, in the use of a later EUTM in the Member State in which the earlier trade mark is protected while being aware of such use, that person is no longer entitled to apply for a declaration that the later trade mark is invalid in respect of the goods or services for which the later trade mark has been used, unless registration of the later EU trade mark was applied for in bad faith.

On that basis and with a view to the (wrongful) cancellation of the claimant's trade mark, the referring court asked the CJEU whether the five-year period “may also be suspended or interrupted on the basis of a legal circumstance other than the submission of an actual claim for the prohibition of the use of the EU trade mark”.

1. a. to c.: Supplementary questions

If the CJEU answers the first question in the affirmative, the referring court has supplementary questions in order to explore whether the wrongful cancellation of the claimant’s trade mark might stop or restart the five-year period for acquiescence:

a. Does the period for acquiescence cease to run during the period when the national trade mark has been (erroneously) removed from the register and subsequently been re-registered (i.e. between 2014 and 2020)?

b. Does the period for acquiescence, after the national trade mark has been re-registered, continue to run, or does a new five-year period begin?

c. When does the five-year period continue to run or restart: From the final dismissal of the first action or from the date of the re-registration of the earlier mark?

2. The statute of limitations

Under Czech law, claims for trade mark infringement become time-barred within three years from the date on which the right could be exercised for the first time.

Thus, the referring court asked if a claim for trade mark infringement can become time-barred under national law before the expiry of the five-year period of acquiescence.

3. Is prior use relevant?

Finally, the judges wondered about the impact of the defendant’s use of “PRIM” prior to the application and registration of the claimant’s trade mark. Under Czech law, the defendant obtained a right of a so-called prior user.

Therefore, the referring court would like to know whether the claimant can still prohibit the use of “PRIM” by the defendant despite the defendant having obtained rights of a prior user under national law.

Comment

The first two questions are the most interesting:

1. Acquiescence and interruption

The CJEU has provided guidelines on acquiescence in Heitec (IPKat here on the subsequent decision of the German Supreme Court), which seem to have paved the way for the responses to this preliminary ruling.

Regarding the question whether acts other than an infringement action can stop the clock of acquiescence, the CJEU held that there is no acquiescence where the claimant carries “out an act that clearly expressed its wish to oppose that use and to remedy the alleged infringement of its rights” (para. 50). This suggests that circumstances other than an infringement action can prevent acquiescence.

1. a. Effects of wrongful cancellation

The question whether the period in which the claimant’s trade mark has been wrongfully cancelled stops the clock on acquiescence requires a resounding “yes”. The CJEU held in HEITEC that acquiescence

"means that the proprietor of [the] earlier mark or other earlier right remains inactive even though it is aware of the use of a later mark which it would be in a position to oppose."

If your trade mark is cancelled, you cannot invoke it in an infringement action and you are not “in a position to oppose”.

The defendant can hardly rely on legitimate expectations derived from an unlawful administrative act later annulled by the courts.

Finally, applying acquiescence during a period of wrongful cancellation would undermine the effectiveness of EU trade mark protection.

1.b. Interruption or restart?

The question whether the five-year period is merely interrupted by acts “that clearly expressed [the claimant’s] wish to oppose” or restarts is more challenging.

The wording of Art. 61(2) EUTMR appears to be clear. It requires acquiescence “for a period of five successive years”. “Successive” suggests that any opposition to the registration or use of the later mark restarts the clock.

It is also fair to the defendant, who has been made aware that the claimant does not tolerate the registration or use of the later mark.

1.c. Relevant starting point

It seems that the period of acquiescence can only restart once the claimant is in a position to oppose the use again. After the dismissal of the first action, the claimant could not have filed a second action because its trade mark was cancelled.

2. National limitation periods

The second question on the applicability of the statute of limitations under national law provides the CJEU with an opportunity to apply and develop Lunapark Scandinavia (IPKat here).

This Kat interprets the decision to mean that all time-related defences of national law, including the statute of limitations, do not apply to claims based on EU trade mark law (including harmonized national law). Otherwise, the conditions of acquiescence would be undermined if national law provided a shorter period for the loss of trade mark claims.

Stay tuned for the Advocate General's opinion. 

The picture is by Alisa Skripina and used under the licensing terms of pexels.com.