In today’s world of ‘passing off’ and ‘infringement’, you must be extra vigilant in protecting your intellectual property (IP). You just cannot relax by merely filing an application or obtaining a registration, which may just be the first step in a long battle ahead. Whenever it comes to your cognizance that someone else is using your trade mark (TM), never let it go by easily because if you fail to take an action soon, you will be unable to act on it ever unless you are fortunate enough to prove fraudulent usage on part of the other party or person. This article aims to decode the concept of ‘acquiescence’ with respect to TM infringement with the help of the judicial cases in this matter.
“If a trader allows another person who is acting in good faith to build up a reputation under a trade name or mark to which he has rights, he may lose his right to complain, and may even by debarred from himself using such name or mark”
WHAT IS ‘ACQUIESCENCE’ IN IP LAW?
Acquiescence implies your passive consent to allow another person to use your registered TM despite knowing that someone else is using your TM. So, once this ‘passive consent’ is not challenged by you within a statutory limit of five years, you lose the opportunity to sue the other party for infringement.
Section 33 contains provisions as to the effect of acquiescence. It provides that where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trade mark, being aware of that use, he shall no longer be entitled on the basis of that earlier trade mark –
- To apply for a declaration that the registration of the later trade mark is invalid, or
- To oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used, unless the registration of the later trade mark was not applied in good faith.
Here, good faith implies ignorance or lack of knowledge on part of the other user of the existence of the Trade Mark infringed by him.
If the proprietor of trade mark even being aware of the use of his trade mark by another does not take any action, rather lets him to invest in popularising his trade mark and expand his business over a period of time, then the proprietor of the trade mark may become disentitled to the remedy of injection against the other user of his trade mark by which otherwise he could restrain the other user from the use of his trade mark. As under the trade marks law such conduct of the proprietor indicates an “acquiescence” i.e., the implied consent on his part in the use of his trade mark by the other.
‘ACQUIESCENCE’: NOT FOR THE FRAUDULENT OTHER USER
The current Trade Marks Act, 1999 – according to sec.33 – clearly provides that the other user of the Trade Mark can take the defense of ‘acquiescence’ against the owner of the Trade Mark, if he has used the Trade Mark in good faith. It is to be noted that even before the enactment of the Trade Marks Act, 1999, while dealing with the defense of ‘acquiescence’ taken by the other user of the Trade Mark, judicial opinion in India had firmly established that there is no scope for the doctrine of ‘acquiescence’ where a fraud is involved. The Indian judiciary had persistently held that for the defense of ‘acquiescence’ under Trade Mark law, another pre-requisite is that the other user must have used the Trade Mark in ‘good faith’ and in total ignorance of the title of the owner of that Trade Mark.
In the case of Kanungo Media Pvt. Ltd. Vs. RGV Film Factory, 2007 it was held by the Hon’ble High Court Delhi that delay in taking action implies acquiescence and that the Trade Mark owner’s silence in claiming his rights amounted to a waiver of his rights.
In the case of Ramdev Food Products Pvt. Ltd. vs. Arvindbhai Rambhai Patel and Others, 2006, the Supreme Court held that ‘acquiescence’ includes an element of delay, when a party allows the other to violate his right and expend money, and the conduct of the party is such that it is inconsistent with the claim for exclusive rights for Trade Mark. Mere silence or inaction does not constitute acquiescence. Action and conduct of both parties should be scrutinized to establish whether it would be unfair and arbitrary to prevent the defendants on the ground of delay. Loss of time, unless compounded with other factors, is usually not considered as a bar to grant injunction.
BURDEN OF PROOF ON THE OTHER USER
An analysis of several judicial judgments over a period of time proves that the person claiming the defense of acquiescence has the burden of proving the following:
- That the Trade Mark holder was aware of the infringing activity.
- That the Trade Mark holder was involved in an activity of encouragement – ‘encouragement’ here includes things such as inaction by the TM holder to send any specific notice of infringement to the other user.
- That the other user has acted upon such act or omission to the detriment of the Trade Mark holder.
In case of infringement of a registered Trade Mark, the owner of the Trade Mark can not only prevent the unauthorized use of his Trade Mark by the remedy of injunction against the other user, but also can enforce the right to oppose the registration of his Trade Mark by the other user under the Trade Mark law. But the owner of a Trade Mark is not entitled to claim the benefit of these remedies if he deliberately fails to take action against the unauthorized use of his Trade Mark by the other user and by his inaction encourages the other user to invest in widely publicizing his Trade Mark and expand his business over a period of time. Such an inaction by the owner of a Trade Mark despite being aware of the use of his Trade Mark by the other person over a period of time implies ‘acquiescence’, i.e., implied consent of the owner of the Trade Mark in the use of his Trade Mark by the other user.
On the other hand, it is also an established rule of law that the other user of the Trade Mark can take the benefit of the defense of ‘acquiescence’ against the owner of the Trade Mark only if he establishes that he had used the Trade Mark in good faith and in total ignorance of the title of the owner.