Filing an application or obtaining a registration is only the first step to the long battle ahead; because once the mark has been registered, the owner has to be more vigilant in protecting it in this era of “passing off”. Here’s the thing, if you come across your mark which someone else is using, then don’t let it go by because if you don’t take an action soon you will not be able to act on it ever unless you are lucky enough to prove fraudulent usage on part of the other person. This post aims to decode the concept of acquiescence with respect to trademark infringement with the help of the judicial opinions in this matter.
Acquiescence – meaning:
Acquiescence essentially means that you passively consent to some other person using your registered trademark despite having the knowledge that someone else is using your trademark. So once this “passive consent” crosses its 5 year statutory limit, you then cannot sue for infringement because you’ve lost your chance.
What the law says:
Section 33 provides that the infringer has a right to take up the defence of acquiescence provided, he has adopted and used the mark in good faith. In this case, good faith basically means lack of knowledge on part of the infringer of the existence of the mark infringed by him. However, the scope of this section has been called into question on numerous occasions. There still remains ample ambiguity as to whether this doctrine can demy relief of permanent injunction.
What the Courts say:
Like how every rule has an exception, so does this rule, which is in the form of fraudulent and dishonest adoption of the mark by the infringer. So in a case where the infringer has applied for registration of “your” mark, or for something similar, knowing fully well that such a mark exists already and you have not taken any action for a period of 5 years against him, then the law says thatstill have a right to sue as long as the male fide intentions of the defendant are proved. There obviously cannot be any assumption of good faith in such cases as there is clear dishonesty on part of the defendant.
The Court, in such cases would be justified in concluding that the defendant wanted to cash in on the plaintiff’s name and reputation. This is what has been the judicial trend in India and continues to be as it was recently held case of Emcure Pharmaceuticals Ltd. vs. Corona Remedies Pvt. Ltd. where the High Court of Bombay upheld that “A mere failure to sue without a positive act of encouragement is no defence and is no acquiescence.”
Basically, judicial opinion in India has always recognised that simple delay by the proprietor of a trade mark in filing the suit against the unauthorized use of his trade mark by the other does not indicate proprietor’s acquiescence in the use of his trade mark by the other.
By looking at various judicial pronouncements over the period of time, the following points can be culled out which the person taking up the defence of acquiescence has the burden of proving:
- The trademark mark holder must have the knowledge of the infringing activity;
- That he engages in an activity of encouragement – “encouragement” has been held to include things like inaction on part of the rights holder to send any specific notice;
- The infringer has acted upon such act or omission to the detriment of the rights holder.
Keeping in mind that the law must be followed, it is, however, rather necessary that in such cases to look at the purpose of trademark protection. Because at the end of the day, the purpose of getting a trademark registered is to enable the consumers of average intelligence to differentiate between two brands. Having said that, one can’t have the cake and eat it too! So instead of sitting on your rights, it would be advisable if you took some “discouraging” action against the infringer in such cases.