ICE UK v Intelligent Cleaning Equipment: Court of Appeal changes the rules on acquiescence
Industrial Cleaning EquipmentvIntelligent Cleaning Equipment Holdings
- Court
- Court of Appeal
- Judgment
- 6 December 2023
- Citation
- [2023] EWCA Civ 1451
If you spot a rival using a similar name, act quickly, even before you know whether or when it was registered.
Two cleaning equipment firms both used "ICE" as their trading name, and one sued the other for using a registered trademark it had allegedly tolerated for too long. The defendants' appeal was dismissed, because the five year clock hadn't actually run out yet.
What happened
Two businesses both used the acronym "ICE" for cleaning equipment. The claimant, trading as ICE UK, had used the name since the 1960s and 90s. The defendants, a group holding company incorporated outside the UK and its distributor, registered international trademarks for ICE that were extended to cover the EU and later the UK, then sold cleaning machines in the UK under that name. The claimant sued for infringement. The defendants counterclaimed, arguing the claimant had acquiesced, meaning stayed silent and let the situation continue, for more than five years while knowing about the defendants' registered trademark, which under section 48 of the Trade Marks Act 1994 would have barred the claimant from challenging it.
What did the court decide in Industrial Cleaning Equipment v Intelligent Cleaning Equipment Holdings?
The Court of Appeal held that the five year acquiescence period runs from when the earlier trademark owner becomes aware the rival is actually using the later mark, not from when they also find out it's registered. This departed from the CJEU's 2011 decision in Budvar, something the court was able to do using the UK's post-Brexit power to depart from retained EU case law. Even so, the defendants' appeal was dismissed. The court also decided that for an international trademark protected in the EU through the Madrid Protocol, the relevant registration date for acquiescence purposes is the later date the EUIPO accepts and publishes protection, not the earlier international filing date. Using that later date, the five year period hadn't actually run out by the time the claimant issued its claim.
What we learned from this
- What I'd take from this is that watching for use of a similar name matters more than waiting for registration paperwork to catch up. The court made clear the clock on acquiescence can start the moment you become aware a rival is using a conflicting name, whatever its registration status.
- If you think a competitor is trading under a name too close to yours, don't wait to confirm it's registered before you raise the issue.
- For trademarks protected through the Madrid Protocol in the EU, the date that matters for UK limitation purposes is when the EUIPO accepts and publishes protection, not the earlier international filing date.
- This ruling only binds courts in England and Wales, so it's worth checking how acquiescence is treated if a dispute touches other jurisdictions.
Things to be aware of
- This is a significant departure from binding CJEU case law under the UK's post-Brexit powers, so other jurisdictions are unlikely to follow it.
- The ruling on when a Madrid Protocol registration date counts for acquiescence purposes is specific to EU and UK trademark procedure and may not translate simply to other registration routes.
- The defendants lost on the facts of registration timing, not because the new UK approach to acquiescence failed, so the wider legal change still stands even though this particular defence did not succeed.
The businesses involved
Industrial Cleaning Equipment (Southampton) Limited
UK business trading as ICE UK, using the ICE mark for cleaning equipment since the 1960s and 90s according to the parties' claims. Brought the infringement claim against the defendants.
- Companies House
- 02732684 Active
- Incorporated
- July 1992
- Registered office
- Southampton
- Business activity
- Non-specialised wholesale trade
- UK trademarks
- 4
Intelligent Cleaning Equipment Holdings Co Ltd
Holding company incorporated outside the UK, part of a group selling cleaning machines in the UK through a distributor under the ICE mark. Registered international trademarks for ICE covering the EU and later the UK.
What others said about it
- D Young & Co: the ruling marked one of the first significant uses of the UK's post-Brexit power to depart from retained EU case law.Source: D Young & Co, December 2023
- CITMA: the judgment gives UK practitioners clearer guidance on how statutory acquiescence works in practice.Source: Citma, January 2024
- Marks & Clerk: the decision now creates a divergence between UK and EU law on exactly when the acquiescence period starts running.Source: Marks Clerk, April 2024
- Wolters Kluwer: the timing is notable, landing shortly before the Retained EU Law (Revocation and Reform) Act 2023 took effect.Source: Wolters Kluwer, April 2024
How we can help
If something in this case sounds familiar, talk it through with us. The first call is free for new clients.
This page is for information purposes only and does not constitute trademark advice or guidance. Summary drafted with AI assistance from the published judgment and checked by The Trademark Helpline (how we write these). Judgment: [2023] EWCA Civ 1451 on Find Case Law, published under the Open Justice Licence. Company details from Companies House; trademark counts from the UK trademark register. Last reviewed 26 October 2026. Report an error.
