Introduction
Currently, the phenomenon of infringers adopting trademarks that are either identical or strikingly similar to those of registered proprietors has become increasingly pervasive, with the intention of capitalizing on the hard-earned goodwill and reputation that have been meticulously cultivated by the rightful owners. The general meaning of "acquiescence" is the tacit assent to an act or the absence of proactive objection. However, the acquiescence, in essence, signifies a form of passive consent to the continued use of one's registered trademark by another party, despite being fully aware of such usage. Consequently, the proprietor relinquishes the right to seek redress for any infringement of their trademark if they fail to object to its use within a statutory period of five years. The infringer may then invoke the defense of acquiescence under Section 33 of the Trade Marks Act, 1999 (Act), provided they have adopted and employed the mark in good faith. This principle embodies the notion that whoever sleeps on their rights slips their rights altogether.
Statutory Provision
Section 33 of the Trade Marks Act, 1999, covers the implications if the owner of a registered trademark fails to take action when someone else uses their mark. Sub-section (1) delineates a five-year limitation period within which a registered proprietor must assert their rights over the unauthorized use of their trademark upon becoming aware of such use by another party. In case the proprietor fails to take action within this statutory period, their silence will be construed as passive consent, unless proven otherwise or unless the latter user's actions are shown to be in bad faith.
Clause (a) of Subsection (1) extinguishes the proprietor's right to seek a declaration of ownership over the contested mark, which has slipped due to the proprietor's inaction, whereas Clause (b) of Subsection (1) addresses the right to oppose the use of the subsequently adopted mark. However, for this right to be invoked, it must be established that such opposition is made in good faith, and failure to prove this good faith will preclude the defense of acquiescence.
Moreover, Sub-section (2) of Section 33 of the Act stipulates that where sub-section (1) applies, the proprietor of the later trademark is not entitled to oppose the use of the earlier trademark or, as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trademark may no longer be invoked against his later trademark.
Elements of Acquiescence
To successfully invoke the defense of acquiescence, the proprietor of the later trademark must demonstrate the following:
- That the proprietor of the earlier trademark was aware, prior to the commencement of the dispute, of the usage of the later trademark;
- That the proprietor of the earlier trademark, through either explicit statements or conduct, effectively encouraged the continued use of the later trademark.
In this context, 'encouragement' may be interpreted as a failure to take action, such as refraining from issuing a legal notice to the proprietor of the later trademark or from filing an opposition or rectification petition before the Trade Marks Registry to contest the registration of the later mark.
Burden of Proof
It is well-settled that when a suit of infringement and/or passing off action is instituted before a court of law, the burden of proof towards availing the defense of acquiescence lies on the defendant. In addition, the defendant may also be required to prove that the adoption and use of the later trademark has been made in good faith with no intention to ride upon the goodwill and reputation of the earlier trademark.
Case Laws
The Delhi High Court in the case of Jolen Inc. v. Doctor & Company 2002 (25) PTC 29 Delobserved that "In trade mark cases the plea of acquiescence is therefore available only if the defendant succeeds in proving that the plaintiff has been not only standing by but also turning a blind eye for a substantial period. If the defendant succeeds in proving the aforesaid conduct of the plaintiff, then the plaintiff cannot be allowed to trample upon and crush the business or the trade set up by the defendant."
Further, in the case of Vbm Medizintechnik Gmbh vs Geetan Luthra CS(COMM) 820/2022 the Delhi High Court stated that "The defence of acquiescence, thus, would be satisfied when the plaintiff assents to or lays by in relation to the acts of another person and in view of that assent or laying by and consequent acts it would be unjust in all the circumstances to grant the specific relief".
Conclusion
Clearly, the principle of acquiescence propounds the ideation that one who slumbers on their rights risks losing them entirely. Acquiescence serves as a powerful defense in trademark disputes, reflecting the importance of timely and proactive enforcement of trademark rights. Trademark owners must be diligent in protecting their marks and be aware that inaction over an extended period, especially when the use of a conflicting mark becomes known, can result in the forfeiture of legal rights.
India: +91-1141 8355 50