Can a Trade Mark Owner Really “Acquiesce” While Their Mark Has Been Cancelled?

One of the more curious questions in EU trade mark law is what happens when a proprietor’s rights disappear temporarily, not because they abandoned them, but because an authority wrongly removed the mark from the register.

Does the clock of acquiescence keep running anyway?

That is exactly what the Court of Justice of the European Union (CJEU) has now been asked to consider in the recent preliminary reference MPM-QUALITY (C-693/25), sent by the Municipal Court in Prague.

The case raises a deceptively simple issue: can you really be penalised for “tolerating” a later trade mark while you were legally unable to enforce your own?

The dispute is relatively straightforward. The claimant, MPM-QUALITY, owns a Czech national trade mark registered since 2001 for goods including clocks, watches and timekeeping devices, with priority reaching back to 1984. The defendant, ELTON, has used the sign “PRIM” for watches since the 1960s, although the parties disagree about whether that use can be attributed to the defendant. ELTON later obtained registration of an EU trade mark for watchmaking services and children’s watches, filed in 2003 and registered in 2005.

The Czech Republic joined the EU in May 2004, meaning that EU trade marks filed earlier automatically extended to Czech territory from accession. MPM-QUALITY brought its first infringement action in April 2009.

But the story took an unexpected turn. In 2014, the Czech Industrial Property Office declared the claimant’s trade mark invalid and removed it from the register. In 2015, the infringement action was dismissed with final effect, because the claimant no longer held a registered right capable of enforcement.

The claimant did not accept that outcome and pursued administrative proceedings against the cancellation. In November 2020, the Czech Supreme Administrative Court annulled the invalidity decision, leading to the trade mark being restored and re-entered into the register. Following that reinstatement, MPM-QUALITY brought a new infringement action in February 2021, which is now the subject of the reference before the CJEU.

The key legal issue concerns acquiescence. Under Article 61(2) EUTMR, the proprietor of an earlier national trade mark may lose the ability to invalidate a later EU trade mark if they have knowingly acquiesced in its use for five successive years.

The Municipal Court in Prague wants to know what happens when the earlier mark is wrongly cancelled in the meantime. Does the five-year period stop running while the proprietor is deprived of its registration? If it stops, does it resume where it left off, or

does a fresh five-year period begin once the mark is restored? And what is the relevant starting point: the dismissal of the first action or the re-registration of the earlier trade mark?

It is difficult to see how acquiescence can apply during a period in which the claimant had no enforceable right. The logic of acquiescence assumes that the proprietor is able to oppose the later mark but chooses not to. The CJEU confirmed in HEITEC that acquiescence requires inactivity even though the proprietor is “in a position to oppose” the later use. If a trade mark has been removed from the register, even unlawfully, the proprietor is plainly not in such a position.

The defendant can hardly rely on legitimate expectations derived from an unlawful administrative act later annulled by the courts. Allowing acquiescence to run during the period of wrongful cancellation would also undermine the effectiveness of EU trade mark protection.

A further question is whether opposition merely pauses the acquiescence period or resets it entirely. The wording of Article 61(2) requires acquiescence for five successive years, which suggests continuity. Any clear act of opposition breaks that succession and may therefore restart the clock. That interpretation also seems fair, since the later proprietor cannot claim tolerance once they have been put on notice.

The reference also raises a separate but important issue regarding limitation periods. Czech law provides that infringement claims become time-barred after three years. The referring court asks whether such a national limitation period can cut off infringement claims before the EU acquiescence period of five years has expired. If national rules could shorten the effective enforcement window, the harmonised EU framework would be weakened. The CJEU may take the opportunity to build on its reasoning in Lunapark Scandinavia, where national time-based defences were viewed cautiously when they interfere with EU trade mark enforcement.

Finally, the defendant argues that it used “PRIM” even before the claimant’s registration, giving it prior user rights under Czech law. The court therefore asks whether such national prior use rights can prevent the proprietor of an earlier registered mark from prohibiting later use. This adds yet another layer of complexity, highlighting the uneasy interaction between EU trade mark law and national doctrines.

The most compelling aspect of the case remains the first question. Can acquiescence really apply when the earlier right was temporarily gone? It seems difficult to accept that a proprietor should lose rights through “tolerance” at a time when enforcement was legally impossible.

The Advocate General’s Opinion will be worth watching closely. For now, MPM-QUALITY serves as a reminder that when a trade mark disappears from the register, even temporarily, the legal consequences may extend far beyond administrative procedure and into the very survival of enforcement rights.