Art. 9 of the Trade Mark Directive (89/104) contains a set of rules that limit the radius of actions of a trade mark proprietor based on grounds of acquiescence. See also art. 53 Community Trade Mark Regulation. The Benelux implemented art. 9 in art. 14bis of the Benelux Trade Mark Act, which provision entered into force in the Netherlands on January 1, 1996 and was replaced by art. 2.24 and 2.29 of the Benelux Treaty on Intellectual Property (entry into force: September 1, 2006). According to these provisions - briefly said - the proprietor of a trade mark that has priority over another 'younger' trade mark, can not oppose the use of the latter trade mark nor apply for a declaration that the later trade mark is invalid, if the proprietor of the earlier trade mark was aware of the use of the younger trade mark, but acquiesced in that use. One exception to the rule is this: where registration of the younger trade mark was applied for in bad faith. Furthermore the text of art. 9 Trade Mark Law contains a more formal restriction, which is 'the one Member State perspective': the provisions deals with the matter from the perspective that the relevant behaviour takes place in a Member State.

In a decision of January 9, 2008 the District Court in 's-Hertogenbosch has examined these topics scholarly in proceedings on the merits (reported by www.boek9.nl). The case was complex. Two Dutch companies - the proprietor and licencee of two figurative trade marks, - registered in the Benelux (since January 18, 1995) and internationally (since May 20, 1995), for amongst others clothing for motorsports (trade mark depicted on top in the top-left-hand corner of this posting), and used in the Benelux and France - sued the Italian Company Dainese S.P.A. (owner of the trade mark depicted in the top left-hand corner; Dainese describes this trade mark as the 'Devil's Face') before the 's-Hertogenbosch Court, demanding primarily a declaration from the Court that Dainese is not entitled to oppose against the use by the plaintiffs of the figurative trade mark in the Benelux. The defence of Dainese that the Court should stay the proceedings on the basis of art. 27 of the Jurisdiction Regulation, because a similar case between the same parties was already pending in France, was rejected by the Court: according to the Court those proceedings concerned claims for (non-)infringement in France, that should be decided according to the applicable French Intellectual Property Statute. For the Court it is not obvious that the facts in France and the French intellectual property provisions that are applicable to those facts are the same as the provisions that apply in the Benelux and will have the same outcome for both proceedings. It was plain to the Court that trade mark use in France that has been found clearly permissible is not permissible in the Benelux and vice versa. In an obiter dictum the Court proclaims that the French court in Paris cannot rule on the behaviour of the plaintiffs in the Benelux, because the infringement claims of Dainese in the French proceedings do not comprise that behaviour.

The second step in the decision concerns the legitimate interest of the plaintiffs: are they from a formal point of view entitled to order a declaration from the Court against the defendant? A full yes follows from the Court: from the written evidence of the negotations between the parties it does not follow that Dainese has abandoned her action for infringement against plaintiffs. The Court considers that the finding that the use of the trade mark by plaintiffs in the Benelux is legitimate, can be relevant for another matter (although that matter has not come under discussion yet), which is: does an import injunction in an another Member State lead to an unjustified division of the common market, contrary to the principle of free movement of goods and services, if the Court finds that the use of the trade mark in the Benelux by the plaintiffs is legitimate?

The third and final step of the Court concerns acquiescence. The Court first defines the market in which the parties are active as a transparant niche market with a limited dimension. The players now one another. The Court finds that given the evidence of active use of the trade mark produced by plaintiffs (to be short: prominent advertising in leading motor-magazines and presence on leading motor exhibitions in and outside the Benelux since 1995/1996) Dainese could not have missed in the the twelve years after 1995 the use by plaintiffs of the trade mark. The Court cannot accept that Dainese was not aware of that use, since Dainese did not come up with any explanation supporting this. This leaves the Court with the plain fact that Dainese never opposed the use of the trade mark until December 10, 2004, which leads the Court to the conclusion that Dainese acquiesced the use of the figurative trademark of plaintiffs as from January 1, 1996 till December 2004, thus more than five successive years. According to art. 14bis of the Benelux Trade Mark Act, which was applicable during that period the Court argues, Dainese could oppose the use of the trade mark until December 31, 2000, which Dainese failed to do. Accordingly the Court rules in favour of the plaintiffs.