In a ruling of 10 October 2025, the Dutch Supreme Court held that a contextual change in the way a trade mark is used after more than five years of acquiescence does not negate the effect of such acquiescence. With this judgment, a long fight over trade marks used for self-care health products has come to an end. 

Getting acquainted with the doctrine of acquiescence

The doctrine of acquiescence follows from article 9 of the EU Trade Mark Directive (Directive (EU) 2015/2436 )  and is implemented in the Benelux in article 2.30septies of the Benelux Convention on Intellectual Property (BCIP).  The doctrine of acquiescence is based on the fundamental concept of legal certainty. In short, it prevents a trade mark proprietor from enforcing its rights against a younger trade mark when the proprietor has consciously tolerated the use of the younger trade mark. The proprietor of the older trade mark must have acquiesced the younger trade mark, without interruption, for a period of five successive years. 

Provided that these conditions are met and the younger trade mark has not been registered in bad faith, the consequence of acquiescence is that the proprietor of the older trade mark is no longer entitled to apply for a declaration of invalidity in respect of the goods or services for which the younger trade mark has been used. Nor can the use of the younger trade mark be opposed in infringement proceedings. Under the umbrella of legal certainty, acquiescence can result in the coexistence of identical or similar trade marks. 

The Lucovitaal v. Leef Vitaal case

In the case at hand, P.K. Holdline sells self-care health products and is the owner of the older trade mark LUCOVITAAL. A direct competitor in the self-care health products segment, Vemedia, registered the trade mark LEEF VITAAL. Apart from a cease-and-desist letter in October 2009, P.K. Holdline never objected to the use of the LEEF VITAAL trade mark for identical products by Vemedia and thus tolerated the use thereof by Vemedia. That was until Vemedia started using new packaging for its products in 2019. For this packaging, one could argue that the LEEF VITAAL trade mark was depicted differently and the added elements made it look slightly more similar to the LUCOVITAAL trade mark. This gave P.K. Holdline reason to initiate infringement proceedings, which it eventually lost in all instances. 

The question that the Dutch Supreme Court had to answer narrows down to whether acquiescence extends to the specific manner in which a trade mark is used during five years, or whether it solely applies to the form in which the trade mark is registered, irrespective of subsequent changes in presentation or appearance.

P.K. Holdline argued that Vemedia’s use of its new packaging as such had not been registered as a trade mark and could therefore not have been subject to acquiescence within the meaning of article 2.30septies BCIP. Therefore, the doctrine of acquiescence had wrongfully come into play, according to P.K. Holdline.

The Dutch Supreme Court explained that the Court of Appeal rightfully assessed whether the use of the LEEF VITAAL trade mark in the new packaging was different compared to the earlier use of the LEEF VITAAL trade mark. In this assessment, only the LEEF VITAAL trade mark within the context of the new packaging was considered – not the packaging as a whole. The Dutch Supreme Court found that the Court of Appeal had come  to the correct conclusion that the LEEF VITAAL trade mark as such had not changed when applied to the new packaging. Therefore, since P.K. Holdline had already acquiesced the LEEF VITAAL trade mark for more than five years, the use of Vemedia’s trade mark on the new packaging was also considered to have been acquiesced to by P.K. Holdline.

Key takeaway

After five years, acquiescence becomes definitive and subsequent changes in the manner of use (presentation or appearance) do not undo its legal effect. Brand owners should not get caught sleeping and should take action once they become aware of a younger trade mark which potentially infringes their rights.

The full judgement of the Dutch Supreme Court can be found here.

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