GC rules for acquiescence: Tronios v BSkyB

Background to the case

Tronios obtained a trade mark registration on 02 May 2001 for the word mark SKYTEC for goods in classes 9 and 11. The relevant goods were "apparatus for receiving, recording, passing on, processing and reproducing electric and electromagnetic signals including wireless microphones and systems, microphones; disc, CD and DVD players; CD and DVD recording apparatus; cables, connecting leads and connectors; digital and analogue sound processing apparatus, low and high capacity audio amplifiers; loudspeakers, cabinets for loudspeakers and accessories" in class 9.

On 23 March 2007, BSkyB sought to revoke the registration on the grounds of non-use. However, Tronios successfully defended the action by supplying evidence of genuine use of the mark on 02 April 2007: the revocation action was therefore dismissed.

On 21 March 2012, BSkyB filed for a declaration of invalidity, relying on registrations for SKY covering identical class 9 goods, including UK registrations dating from 1995. BSkyB claimed a likelihood of confusion under Art. 8(1)(b) European Union Trade Mark Regulation (EUTMR), and unfair advantage/detriment to distinctive character or repute under Art. 8(5) EUTMR.

Tronios argued that BSkyB had acquiesced (it had knowingly tolerated the use of the SkyTec mark, for over five years) and was therefore precluded from invalidating its registration. Tronios argued that BSkyB must have had the requisite knowledge at least some days before the filing of the revocation action, almost five years earlier, and by 21 March 2007 at the latest. Tronios also submitted evidence of sales and advertising relating to its SkyTec branded goods, indicating that both marks were on the market for several years.
The Cancellation Division rejected the acquiescence claim, upholding the invalidation in its entirety. Tronios' trade mark registration was invalidated in respect of class 9 goods based on a likelihood of confusion with BSkyB's UK registration for SKY under Art 8(1)(b) EUTMR.

Tronios appealed to the Board of Appeal with the following arguments:

1. The marks had coexisted for almost eleven years, if counted from the date of registration through to the date of the declaration of invalidity.
2. BSkyB admitted to patrolling trade marks containing the element 'sky'. No action was taken to challenge the use of the SKYTEC mark, and as such, they should bear the consequences of acquiescence (by being prohibited from challenging Tronios' longstanding use and registration).
3. Tronios had filed applications for SKYTEC around the world, including the UK, and it could reasonably be presumed that BSkyB was aware that Tronios would have (and had) used the SKYTEC mark.
4. It could reasonably be presumed that BSkyB had knowingly tolerated the registration and use of SKYTEC for more than five years prior to the request for invalidity.

However, the Board of Appeal upheld the Cancellation Division's decision, stating that the circumstances of the case did not support a finding of acquiescence: the revocation was filed on 21 March 2012 but BSkyB was only furnished with evidence of Tronios' use of the SkyTec mark as part of the revocation action on 02 April 2007. There was a period of less than five years between the two dates (albeit by a matter of days).

GC requirements for acquiescence

Tronios further appealed to the General Court (GC), reiterating that the marks had coexisted in the UK, and that BSkyB must have been aware of the use of SKYTEC several days before applying to revoke the registration. Tronios tried to present new evidence before the GC, in support of the argument that BSkyB could be presumed to have had the requisite knowledge.

The GC outlined four conditions that must be satisfied before the five-year period starts running in the context of acquiescence (see Bud?jovický Budvar C-482/09):

1. The later trade mark (in this case, SKYTEC) must be registered.
2. The application resulting in the later trade mark (SKYTEC) must have been made in good faith.
3. The later trade mark (SKYTEC) must be used in the member state where the earlier trade mark (SKY) is protected.
4. The proprietor (BSkyB) of the earlier trade mark (SKY) must be aware of the use of that trade mark (SKYTEC) after its registration.

The GC agreed with the Board of Appeal's finding that it was for Tronios to submit evidence that BSkyB had actual awareness of the use of the SKYTEC mark.

It could only be deduced with certainty that BSkyB had become aware of the use on receipt of Tronios' evidence of use on 02 April 2007. The fact that the marks co-existed in the market could not lead to a finding that BSkyB was aware of that use. The additional evidence adduced before the GC was inadmissible.

In short

This decision provides a reminder about the requirements for acquiescence: the burden of proof is on the proprietor of the later mark to show that the holder of an earlier mark was actually aware of, and tolerated, the use of a later mark.

The GC decision is useful in that it supports the position that no negative inference can be drawn where an earlier rights holder does not file actions for revocation and invalidation simultaneously. The key is to make sure an unsuccessful revocation action is followed by the well-timed filing of an invalidation action.

Case details at a glance

Jurisdiction: European Union
Decision level: General Court
Parties: Tronios Group International BV v EUIPO
Citation: T-77/15
Date: 20 April 2016
Full decision: http://dycip.com/t-7715