Acquiescence as a bar to trade mark infringement proceedings

10th April 2015

The French Supreme Court has rejected an appeal by Hachette Filipacchi Presse, the owners of the magazine, Paris Match, against a decision of the Paris Court of Appeal that it could not claim infringement of the marks MATCH and PARIS MATCH by the dating website, Match.Com.

Hachette issued proceedings in 2006, claiming that the Community Trade Mark MATCH.COM infringed its marks MATCH and PARIS MATCH. The claim was successful at first instance.

On appeal, Match.com argued that as its registration was filed in 1996 and Hachette had filed an unsuccessful opposition to that application, culminating in the registration in 2004, Hachette was aware that the sign was being used in France. As such, so Match.com maintained, Hachette had acquiesced to its use of the sign for a period of at least five years and was prevented from instituting proceedings under Article 54 of the Community Trade Mark Regulation. Article 54 states:

“Where the proprietor of an earlier national trade mark as referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) has acquiesced, for a period of five successive years, in the use of a later Community trade mark in the Member State in which the earlier trade mark or the other earlier sign is protected while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark or of the other earlier sign either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later Community trade mark was applied for in bad faith.”

The Paris Court of Appeal accepted Match.com’s argument. It found from the evidence that Hachette was aware of the use of the MATCH.COM sign in France from at last 2000. That finding was upheld on Hachette’s appeal to the Supreme Court with the consequence that by the time Hachette came to file its action for infringement, it had knowingly acquiesced in the use of the sign for more than five consecutive years so that its action could not be sustained.

The case highlights that, in cases involving acquiescence, it is the date of use of the sign constituting the Community trade mark registration that is material not the date of registration.