ECJ ruling brings clarity on the interruption of forfeiture periods

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

ECJ ruling brings clarity on the interruption of forfeiture periods

Sponsored by

maiwald-logo-cropped.PNG
dominoes-1902622.jpg

Susanna Heurung of Maiwald examines a decision by the European Court of Justice concerning the ending of a period of ‘acquiescence’ in a trademark case and what it means for potential plaintiffs

In a recent judgment, the European Court of Justice (ECJ) has clarified under which conditions a cease and desist letter can interrupt forfeiture periods (ECJ GRUR 2022, 986 – HEITEC). According to the ECJ, this should only be the case for actions and warning letters that are aimed at achieving a legally binding solution and have been implemented with due diligence.

Facts of the case

This judgment concerned a legal dispute between HEITEC AG as plaintiff and HEITECH Promotion GmbH as defendant, whereby HEITEC AG, as the owner of the earlier trademark, demanded that HEITECH Promotion GmbH cease and desist from using the company mark HEITECH Promotion GmbH and from using trademarks with the word element "heitech".

Following an unsuccessful warning letter, HEITEC AG took three and a half years to file a lawsuit, which was not served on the defendant until one and a half years after the action had been filed due to various formal errors. The proceedings went all the way to the Federal Court of Justice (BGH), which had to clarify whether HEITEC AG should be held liable for forfeiture under Section 21 I, II MarkenG, since it had tolerated the younger trademark for five years despite being aware of it.

The decisive question was therefore which requirements are to be met by measures that can interrupt such acquiescence and therefore forfeiture of rights. This question was referred to the ECJ.

Decision of the ECJ

In its ruling, the ECJ clarified that only actions in which the serious intention to terminate the infringement is clearly evident can terminate the so-called acquiescence. This is generally the case when an administrative or judicial appeal is filed. However, seriousness is also lacking here in exceptional cases if the filing of such a legal remedy is defective and these defects are not corrected in a timely manner.

Also, a warning letter can terminate the acquiescence. However, if the cease and desist letter remains unsuccessful, there is also a lack of sufficient seriousness here if further possible measures to remedy the infringement are not taken promptly.

When to file a lawsuit

In future, only those measures that are taken promptly (and in proper form) will be able to end an acquiescence if there is no doubt as to their seriousness. If a warning letter remains unsuccessful, further actions must follow in a timely manner, whereby the ECJ specifically only comments on the fact that in any case the filing of an official or judicial legal remedy is sufficient.

It is therefore advisable to file a lawsuit immediately after the unsuccessful expiry of a deadline set in the warning letter in order to signal seriousness and to prevent forfeiture. Repeatedly sending warning letters without taking further steps when the deadlines set in the warning letters expire does not help. In turn, filing a lawsuit must be suitable to end the acquiescence.

Thus, the plaintiff should do everything possible to ensure prompt service on the defendant. The mere filing of an action as a sham for delaying the deadline, without observing the formal requirements or without prompt correction of errors, will no longer be able to bring about an end to acquiescence according to this judgment.

more from across site and SHARED ros bottom lb

More from across our site

The deal could mean that hundreds of licensees in the pool would have access to a broader range of VVC patents
INTA’s foray into the business of law, including why IP is crucial to third-party investors, is a sign of the times
Tilleke & Gibbins’s Indonesia director explains why the firm’s regional presence is a blessing, the threat posed by new practices, and where she sees opportunities
Jane Møller Nielsen explains why a love for linguistics can help build a successful IP career, and reveals the Pippi Longstocking quote that inspires her
The UK Supreme Court will hear another trademark case in Dairy UK v Oatly, this time centring on the registrability of regulated terminology
Law firm leaders explain how due diligence and AI-related advice are providing opportunities and how they navigate the associated challenges
More important FRAND decisions by the UK courts and a changing of the guard for Siemens’ IP team were among the top talking points this week
Operating profit decreased from £968,942 to £5,254, but the firm expects long-term investments to pay off for clients
One of the litigators expects that she’ll have to help clients navigate challenges posed by USPTO developments
Counsel explain what kind of ITC-related inquiries they’re getting from clients and why complaints at the forum were up in 2024
Gift this article