Intellectual Property Rights have become a cornerstone of modern business, and trademarks, in particular, are valuable commercial assets. However, protecting a trademark is not just about registration; it also involves active enforcement against infringers. An interesting aspect of trademark law in India is the concept of acquiescence, governed by Section 33 of the Trade Marks Act, 1999.

Acquiescence means ‘implied consent’. In simple terms, if the proprietor of a registered trademark knowingly allows another party to use an identical or similar mark for a significant period without objection, they may lose their right to oppose its use later.

Section 33 of the Trade Marks Act, 1999 deals with the effect of acquiescence. It provides that

“(1) 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—

(a) to apply for a declaration that the registration of the later trade mark is invalid, or

(b) 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.

(2) Where sub-section (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark, or as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark may no longer be invoked against his later trade mark.”

The Key Elements of Section 33 are

  1. The proprietor must have actual or constructive knowledge of the use.
  2. The use by the later user must be continuous for five years.
  3. The proprietor must have ‘acquiesced’, i.e., allowed the use without objection.
  4. Further the said Section clearly states that if the later mark was registered in bad faith, Section 33 does not apply.

Hence for Section 33 of the Trade Marks Act, 1999 to apply, the later user’s use of the conflicting mark must be continuous and uninterrupted for a period of five years, starting from the date the proprietor of the earlier trademark knew or ought reasonably to have known about such use. This means the later user must actively and genuinely use the mark in the market, without any significant breaks, and the earlier proprietor must not have taken any steps to oppose or object to this use during the entire five-year period. The purpose behind this requirement is to ensure that genuine, good-faith and continuous use can take cover from invalidation or opposition under Section 33, since the prior owner knowingly permitted use for a significant duration. However, if at any point the proprietor issues a warning, sends a cease-and-desist notice, files an opposition, or initiates legal proceedings, the five-year period is interrupted and resets.

Therefore, Section 33 strikes a balance between protecting the rights of the prior trademark owner and ensuring fairness to a later user who, acting in good faith, may have invested substantial time, resources, and goodwill in developing their brand. It also serves as a reminder for trademark proprietors to remain vigilant and take timely steps to safeguard their rights.

Indian courts have repeatedly emphasized that a trademark owner must act promptly. The doctrine of acquiescence is often discussed alongside the doctrine of delay and laches. Courts examine whether the prior owner’s inaction misled the user into believing they could use the mark without dispute.

For instance, in Khoday Distilleries Ltd. vs. Scotch Whisky Association (2008), the Supreme Court acknowledged that if a proprietor delays taking action against another party’s infringement, allowing them to build significant goodwill, the principle of acquiescence might prevent the proprietor from later enforcing their rights. Thus, highlighting the importance of prompt action in protecting intellectual property rights.

Further in GSK Consumer Healthcare S.A. vs. EG Pharmaceuticals & Ors. (2019), the Delhi High Court clarified that Section 33 cannot be invoked as a defence against a registered proprietor of a trademark. The Court held that the Section protects a registered mark from an earlier unregistered user who has knowingly acquiesced, but not vice versa. Since GSK’s ‘OTRIVIN’ mark was registered and it had actively opposed misuse, the defendant’s plea of acquiescence failed.

However, a trademark owner can avoid acquiescence by

  • Monitoring the market regularly for similar marks.
  • Sending cease-and-desist notices at the earliest sign of infringement.
  • Keeping evidence to show timely objections.
  • Further if the user does not stop, escalate to opposition or rectification proceedings.

Section 33 serves as a reminder that trademark rights come with the responsibility of timely enforcement. Passive owners risk weakening their own rights through inaction. For businesses, understanding this provision helps in shaping effective brand protection strategies and avoiding costly disputes.

By Amrita Chowdhury