Office Location

Delhi:

E-5, 2nd Floor, Defence Colony
New Delhi - 110024
Tel : 011-24336744

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Mumbai:

Office No. 1410, 14th Floor, Maker Chamber V, Nariman Point, Mumbai
Tel : +91 22-22873499

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Gurgaon:

Level 18, One Horizon Center, Golf Course Road, DLF Phase 5, Sector 43, Gurgaon 122002, India
Tel : +91 124 668 8146 / +91 124 668 8147

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Mumbai (Entertainment and Media Practice)

Office No. 213, 2nd Floor, A-wing, Crystal Plaza, Andheri Link Road, Andheri (W), Mumbai.
Tel : 022-62360762

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Mumbai (Corporate and Transactional Practice)

909/A, Capital Building, Bandra Kurla Complex, East Mumbai- 400098

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Bangalore:

21/2, 1st Main Road,
Opp Indian overseas Bank,
Gandhinagar,
Bengaluru - 560009

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Kanpur:

77A, Cantt., Kanpur - 208004

Acquiescence as a Defence in Trademark

When faced with a claim of trademark infringement, a defendant might avoid or minimize liability if it can establish the equitable defense of acquiescence. A defensive claim of acquiescence may be available where the trademark owner has affirmatively represented to the defendant that the mark at issue may be used and the defendant relies on that representation to its prejudice. In general, an acquiescence defense requires that a defendant satisfy three elements, namely: (1) it received assurances from the plaintiff that the defendant could use the mark; (2) it relied on such assurances; and (3) it would experience undue prejudice if it now had to cease use of the mark. Although “acquiescence” has been held to be as a complete defence for the other user of the trade mark against the proprietor of the trade mark yet until the enactment of Trade Marks Act, 1999 the defence of “acquiescence” was not clearly laid down under the Trade Mark Law in India. In the absence of clearly defined defence of “acquiescence” under the Trade Marks Law until the enactment of Trade Marks Act, 1999, judiciary in India played pivotal role in giving the meaning to “acquiescence” as the defence for the other user of the trade mark against the exclusive right of the proprietor over his trade mark. Thus in Moolji Sicca & Co. v. Ramjan Ali Calcutta High Court (AIR 1930 Cal 678) laid down the principle that, to set up the defence of “acquiescence” against the proprietor of the trade mark the other user must prove that the proprietor of the trade mark was not only aware of the use of his trade mark by the other but also encouraged the other user by not objecting to the use of his trade mark by him. In Moolji Sicca & Co. v. Ramjan Ali Calcutta High Court in its judgment quoted the observation made by Lord Justice Cotton in Proctor v. Bennis 36 Ch. Div.760 in the context of the defence of “acquiescence” which reads as follows: “It is necessary that the person who alleges this laying by should have been acting in ignorance of the title of the other man, and that the other man should have known that ignorance and not mentioned his own title”

On this basis the defence would be made out where the proprietor of the well-known mark has taken no action for a continuous period of five years in the use of that mark when he was aware of that use. A number of points in the limitation require consideration. First, in the context acquiescence appears to require no more or less than inaction with actual knowledge of the use. Secondly, if bad faith is shown then it seems the limitation is not applicable in terms either of preventing an attack on the later registration or opposing its use. The pronouncement on the issue by the Hon’ble Supreme Court, India being the decision reported as Khoday India Ltd. Vs. Scotch Whisky Asson. & Ors. (Appeal (civil) 4179 of 2008). It has been categorically held that where acquiescence is established or there is an inordinate delay in bringing an action for infringement of a trade-mark or passing off, the discretionary relief of injunction may be denied. In M/s. Power Control Appliances and Others v. Sumeet Machines Pvt. Ltd., (1994 SCR (1) 708) Supreme Court stated: “Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches.”

Conclusion:

It has been observed that injunctions or damages were refused to the claimant on the ground of delay verging on acquiescence but it is not easy to see on what principle, nor how this could be right in actions for infringement. If the plaintiff stood by knowingly and let the defendants build up an important trade until it had become necessary to crush it, then the plaintiffs would be stopped by their acquiescence. If the acquiescence in the infringement amounts to consent, it will be a complete defence as was laid down in many Judgments. However, as pronounced in Re Swarn Singh case, it was held that statutory rights can be lost by delay. The effect of a registered mark is so clearly defined in the statute as to be not capable of being misunderstood. Even if there is some delay, the exclusive right cannot be lost.

On the aforesaid basis, the defence would be made out where the proprietor of the well known mark has taken no action for a continuous period of five years in the use of that mark when he was aware of that use. A number of points in the limitation require consideration. First, in the context acquiescence appears to require no more or less than inaction with actual knowledge of the use. Secondly, if bad faith is shown then it seems the limitation is not applicable in terms either of preventing an attack on the later registration or opposing its use.