Can one act after years against use of a later registered trademark?

The owner of an older trademark can have a later registered conflicting trademark declared invalid. The registration of the younger trademark does not function as some kind of approval allowing for undisturbed use of this younger trademark: the older trademark owner can still take action against it after the younger trademark has been registered. But the older trademark owner should not wait indefinitely. If he becomes aware of the younger registration and the use, he has five years to act against the younger trademark registration or the infringing use. Is sending a letter sufficient as an action?

The 5 year period does not start again when a letter summons is sent, so was decided in the Heitec judgment of the Court of Justice of the EU. The proprietor of a trademark who sends a C&D letter concerning the infringing use of a later registered trademark, must take the next step within a reasonable period after the warning: by initiating an invalidity action against the later registration or an infringement action before the court. If he fails to do so, the first trademark owner will lose the right of action against the younger trademark. The trademarks will then coexist side by side.

A concrete example occurred recently in the Netherlands. Trademark owner PK Holdline of LUKOVITAAL started preliminary injunction proceedings against LEEFVITAAL of Vemedia. Letters had already been exchanged in 2009 after Vemedia had registered the trademark and started to use it. 13 years later, Vemedia suddenly ramped up the use significantly with a broad new line of dietary supplements. PK Holdline argues that this goes well beyond the use in 2009.

The Preliminiry Injunction Judge (in Dutch) applied the 5 year rule. PK Holdline had knowledge of the younger trademark registration and its use, and then tolerated that use for more than five years. The first trademark owner cannot stop this use anymore.

Maarten Haak