1.1 Background
Historically, there have been two types of trade mark acquiescence that exist within English Law. These are:
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Statutory acquiescence, as set out in the Trade Marks Act 1994 (TMA).1
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‘Common law acquiescence’ or ‘estoppel by acquiescence’, as developed by English courts. The relevant test to be applied is whether, in all the circumstances, it would be unconscionable to allow the claimant to maintain its claim against the defendant.2 Such considerations for the Court may include whether the proprietor induced or encouraged the defendant’s behaviour and the passage of time.3 If made out, common law acquiescence has traditionally offered a free-standing defence to trade mark infringement.
Acquiescence is to be distinguished from the doctrine of ‘honest concurrent use’, which arises where consumers recognise there are two sperate businesses trading under the same sign, meaning the function of either mark to guarantee origin is unimpaired.4 They have, in effect, co-existed peacefully on the marketplace without causing any conflict to their side-by-side trading.5
While acquiescence serves as a defence, honest concurrent use represents a factor to be considered as part of the infringement analysis.6 Where it arises, honest concurrent use binds both parties, such that neither may restrict the other from using the sign, though they may each independently stop a third party from using it.7
1.2 The Marussia principle
Deriving from a 2016 trade mark case of the same name,8 the Marussia principle established that national defences of consent such as estoppel by acquiescence could not be relied upon under EU law, as they exceeded the scope of consent as defined under the European legislation.9 To permit reliance on broader, home-grown, defences would contravene the harmonisation objectives of EU law, limiting the exclusive right of EU trade mark proprietors beyond what is expressly provided under the 2015 Directive.10
1.3 Does the Marussia Principle apply to UK trade mark proceedings?
While the principle was formulated in relation to EU trade mark proceedings, there was some uncertainty as to whether it extended to national trade marks. Post-Brexit, it appears that courts have treated Marussia favourably in the context of UK trade mark proceedings.11
Subsequent cases which have cited Marussia include:
Case
Coreix Ltd v Coretx Holdings Plc [2018] F.S.R. 6. at [92]
Cormeton Fire Protection Ltd. v. Cormeton Electronics Ltd. & Anor. [2021] EWHC 11 (IPEC) at [129]
Urban Bubble Ltd. & Ors. v. Urban Evolution Property Management Ltd. & Ors. [2022] EWHC 134 (IPEC) at [146]
Quantum Advisory Ltd v Quantum Actuarial LLP [2024] EWCA Civ 247 at [79]-[97]
Easygroup Ltd v Easy Live (Services) Limited [2024] EWHC 2282 (Ch) at [150]
Treatment
Followed
Followed
Followed
Held that the principle did not apply to the instant case
Discussed but left unresolved
1.4 Will this change in future?
UK courts have made clear that any departure from EU jurisprudence should not be taken lightly, particularly in areas of law that impact across national borders.12
Though senior courts possess the power to depart13 and have exercised this power on occasion,14 generally it appears that courts will strive for harmony with the jurisprudence of the Court of Justice, rather than adopting a divergent interpretation, unless driven to the conclusion that the Court of Justice’s interpretation of the legislation is erroneous.15
As a result, it appears that, unless otherwise amended statutorily, the Marussia principle will likely continue to apply. Accordingly, the national defence of common law acquiescence is unavailable in trade mark proceedings.
1 Trade Marks Act 1994 (TMA), s48(1).
2 Habib Bank v Habib Bank [1982] R.P.C. 1. at page 36; Kerly’s Law of Trade Marks and Trade Names (17th edition, Sweet & Maxwell 2019) at chapter 17, section 16, subsection 104.
3 Kerly’s Law of Trade Marks and Trade Names (17th edition, Sweet & Maxwell 2019) at chapter 17, section 16, subsection 104.
4 Budejovický Budvar np v Anheuser-Busch Inc (No 2) [2012] EWCA Civ 880 at [23].
5 Michael Edenborough KC, Contentious Trade Mark Registry Proceedings (CITMA, Second Edition 2023) 152.
6 Match Group LLC & Others v Muzmatch & another [2023] EWCA Civ 454 at [102].
7 Dent v Turpin (1861) 2 J. & H. 139; Southorn v. Reynolds (1865) 12 L.T. 75.
8 Marussia Communications Ireland Ltd v Manor Grand Prix Racing Ltd [2016] EWHC 809 (Ch).
9 Quantum Advisory Ltd v Quantum Actuarial LLP [2024] EWCA Civ 247 at [79].
10 Martin y Paz Diffusion Sa v Depuydt, C-661/11, EU: C:2013:577 at [54]-[55]; Match Group LLC & Others v Muzmatch & another [2023] EWCA Civ 454 at [77].
11 Kerly’s Law of Trade Marks and Trade Names (17th edition, Sweet & Maxwell 2019) at chapter 17, section 16, subsection 102.
12 Michael Edenborough KC, Contentious Trade Mark Registry Proceedings (CITMA, Second Edition 2023) 24; TuneIn Inc v Warner Music UK Ltd [2021] EWCA Civ441, [2022] 2 All E.R. 35 at [198] (Sir Geoffery Vos MR).
13 Section 6(5A) of the European Union (Withdrawal) Act 2018 and the European Union (Withdrawal) Act 2018 (Relevant Court) (Retained EU Case Law) Regulations 2020 (SI 2020/1525).
14 Industrial Cleaning Equipment (Southampton) Ltd v Intelligent Cleaning Equipment Holdings Co Ltd [2023] EWCA Civ 1451, [2024] FSR 3 at [80]-[89].
15 Thatchers Cider Company Limited v Aldi Stores Limited [2025] EWCA Civ 5 at [146]
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