Standard of proof for demonstrating knowledge of the use of a later trademark necessary to invoke acquiescence in the use of that trademark – commentary on the judgment of the General Court of the European Union of 6 November 2024, T 136/23

Abstract

The judgment concerns a practically important issue in the form of the standard of proof for demonstrating knowledge of the use of a later trademark by the owner of an earlier trademark, which is one of the prerequisites for acquiescence, which excludes the possibility of invalidating the later trademark and, currently, also prohibiting its use. The judgment sets a high threshold, confirming that presumptions and assumptions in this regard are inadmissible, as is reliance on the duty to know about the later mark. This conclusion should generally be approved, but this does not mean that inferring knowledge of the use of the later mark from circumstantial evidence is inadmissible. This possibility exists, but the awareness of the use of the later mark on the part of the owner of the earlier trademark must be beyond doubt. This needs to be emphasized because some views expressed in the relevant literature seem to be more liberal in this regard. There are also rulings in which knowledge of the use of the later mark was presumed or it was assumed that the owner of the earlier trademark must have known about such use.