INTRODUCTION
Imagine a scenario, wherein,‘A’, the owner of ‘Oreon’ becomes aware of the recent existence ‘B’’s company ‘X-Oreon’, producing the same goods as that of ‘Oreon’, waits for ‘X-Oreon’ to build up a goodwill in the market and then 6 years into the knowledge of such usage, approaches the Court, alleging, inter alia, the infringement of his trademark and seeking remedy against B for the same.
Would such a remedy not only validate and encourage unreasonable delays in approaching the Court in case of infringement, but further put ‘B’ in a situation that is unduly disadvantageous? This is where the law of acquiescence comes in.
Acquiescence, in simple terms, means consenting to, or accepting certain violation without any protest. Being an equitable doctrine, law of acquiescence acts as an estoppel in pais and prevents a party from seeking a remedy (after the lapse of a particular time period) for the violation of a right which the party itself had earlier waived off through its conduct. Provided, that such time period was of the essence while seeking the remedy under consideration, in the first place.
The doctrine of acquiescence is not just a concept of Intellectual Property Law, but applies generally as an equitable principle, in all such circumstances wherein there exists an intentional delay in seeking remedy, which has exceeded the law of limitation. And is further supplemented by certain conduct of person entitled to a right that signifies waiver of such infringed right by person who was so entitled. This article however, shall restrict itself to the law acquiescence as it applies in the law of trademark, and shall be an attempt at exploring the overlaps and distinctions vis-à-vis acquiescence and other concepts within the same Venn.
ACQUIESCENCE UNDER TRADE MARKS ACT 1999
Section 33 of the Trade Marks Act, 1999 deals with the effects of acquiescence wherein the earlier proprietor, i.e., the one with the earlier trade mark, accepts the existence of the latter registered trade mark for a continuous period of 5 years, such proprietor of the earlier trademark no longer holds the right to apply for a declaration making the later registered trade mark invalid. Essential elements of section 33 may be summarised as:
- Existence of earlier trade mark: i.e., it is imperative that a right toward certain mark must already be in existence.
- Acquiescence for continuous period of 5 years: such acceptance of the use of the later occurring registered trade mark must not be a fragmented period of time but a single stretch of 5 years.
- Acquiescence with regards to a registered trade mark: a non-registered trade mark of the latter proprietor does not fall into purview of section 33. Thus, the right of the former proprietor is not exhausted in relation to the use of a trade mark that is not registered.
- Awareness of the use of such registered trade mark: awareness of infringement is sine qua non for the doctrine of acquiescence to apply. Since, a wrong that is not known, cannot be remedied.
- Registration of later trade mark applied in good faith: the application of the trade mark of the later proprietor must have been made with a bona fide intention, and not to vex the former proprietor, or to, say, capitalise upon the former proprietor’s goodwill.
Effects of acquiescence, as per Section 33:
1) Loss of right to challenge: i.e., after the exhaustion of 5 years, earlier proprietor is neither entitled to apply for declaration invalidating registration of the later trademark, nor is the earlier proprietor entitled to oppose such use of later registered trade mark. However, the usage referred to under section 33 is solely in reference to the goods or services to which the later registered trademark has till date applied.
Thus, where the trade mark of ‘A’ is used in relation to pharmaceutical products and the later registered trade mark of ‘B’ was being used with reference to cosmetics suddenly began producing pharmaceuticals, such a circumstance will not fall under the purview of section 33.
2) Mutual limitation: under sub section (2) of section 33, where all conditions necessary to the applicability of the section are met with, even the proprietor of later registered trademark holds no entitlement to oppose the usage of the earlier trade mark or to oppose the exploitation of the earlier right that the earlier proprietor still holds with respect to his respective trade mark.
MERE INACTION DOES NOT EQUATE TO ACQUIESCENCE
Time and again, the courts of law have reaffirmed their stance with regard to acquiescence requiring positive course of action. ‘Implied acquiescence’, or ‘deemed acquiescence’, or mere inaction, has not been recognised as rendering the right of the earlier proprietor as abandoned. There has to be certain extent of co-existence of positive factors that substantiate such inaction with the intention to waive off the right by the earlier proprietor under consideration.
In the case of Social Work and Research Centre v. Barefoot College International, 2023/DHC/001632, the Hon’ble High Court of Delhi has laid down, that- “for acquiescence or waiver to apply against a plaintiff,
(i) The plaintiff must be shown to have been sitting by, when the defendant was invading his rights,
(ii) The course of conduct of the plaintiff must be inconsistent with the claim,
(iii) The act of acquiescence has to be positive, and not mere inaction or silence,
(iv) The acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in the defendant,
(v) There must be conscious abandonment of an existing legal right, advantage, claim or privilege, as would amount to an agreement not to assert the right, and
(vi) Voluntary and intentional relinquishment of the plaintiff‟s right must be shown to have taken place.”
Further, the burden of proving acquiescence rests upon the person claiming such acquiescence. And for the same, the defendant alleging acquiescence must first prove that the mark of the defendant is a registered trademark which was registered in good faith. And that the earlier proprietor was aware of the existence and usage of such trademark in relation to the particular goods or services being the subject matter of the dispute for the past 5 years or more. Additionally, the defendant also has to prove that the awareness of the earlier proprietor was substantiated with such continuous conduct that has led to the conscious and voluntary abandonment of legal right that earlier existed with such proprietor in the first place.
ACQUIESCENCE AND LACHES
Laches refers to unreasonable delay and/ or neglect by the party seeking equitable relief, which has somehow prejudiced the other party, owing to said delay or neglect. Laches is thus another defence that is used against the claimant where the delay in seeking remedy brings about some undue disadvantage to the defendant owing to some change in position which could have been avoided by the vigilance and quick action of the claimant. Further, such a defence of laches can be used when there is no statutory bar, i.e., set period of limitation for approaching the Court to seek remedy.
So while both the doctrines- that of delay and laches and that of acquiescence involve the elements of delay and silence, laches is not to be confused with the doctrine of acquiescence, the latter basing itself upon equitable estoppel. And while laches extinguishes the remedy and not the right, acquiescence refers to virtually the exhaustion of the right itself, owing to the active acceptance of the violation.
The distinctions and the overlaps between the concepts of acquiescence and laches have been comprehensively discussed by the Hon’ble Apex Court time and again, such as in the case of Chairman, State Bank of India v. M.J. James, Civil Appeal No. 8223 of 2009, wherein it has been clarified that while both the concepts are based upon equitable considerations, acquiescence implies active consent, basing itself upon estoppel in pais, while laches includes even simple passivity.
And further, in the case of Union of India v. N Murugesan Etc. Civil Appeal Nos. 2491-2492 of 2021, where it has been elucidated upon that in a case restricting itself to merely laches and not extending to acquiescence, the principle of estoppel would be applicable to all defences available to a party and not just to particular issues concerned, as it would be in the case of acquiescence.
CRITICISMS AND CHALLENGES TO THE DEFENCE OF ACQUIESCENCE
- Evidentiary difficulties: the party alleging acquiescence has to not only prove prior knowledge of the other party, but also the conduct of the latter which led to the former believing active consent of the earlier proprietor. Proving such conduct throughout the timeline and the continuity of such conduct becomes a challenge for the party alleging.
- Equitable nature and discretion: being an equitable doctrine, acquiescence essentially rests upon the discretion of the court. In such a case, the party alleging may attempt to mask an infringement which was done in bad faith without there actually being any existence of knowledge or conduct.
- Challenges in case of ‘well known marks’: if the mark of the earlier proprietor is a well-known mark, constant monitoring in such cases becomes a tedious and somewhat improbable task for such a proprietor. In such a case if certain later registered mark was to go undetected, granting the defence of acquiescence to the party alleging later on, may grant the later registered trade mark an unfair advantage. However, proving of such acquiescence poses further difficulty, owing to the fact that bona fide registration has to be first established.
CONCLUSION
The threat of potential misuse of the defence of acquiescence has led to a growing trend of brand monitoring in the age of social media and the evolution of artificial intelligence in curbing accidental acquiescence in the digital marketplace. The doctrine of acquiescence is not merely a defence for the bona fide subsequent user, but a constant reminder for the earlier proprietor that the protection of his intellectual property comes with a plethora of duties and the requirement of vigilance and immediate action where such rights are infringed.
And while both, acquiescence and laches are based upon equity and address delay in enforcing rights, acquiescence takes it a step further and signifies a waiver of rights through certain conduct of who would otherwise be entitled to such right. Section 33 of the Trademarks Act, 1999 thus provides a balance between trade mark protection and fairness, providing equity to both parties to the dispute.
However, the same comes with its own box of evidentiary and practical challenges, making the discretion of the courts while interpreting acquiescence on a fact to fact basis all the more crucial in reaching to an equilibrium that upkeeps the core of the statute while reinforcing concepts of good faith and vigilance that underpin the very foundation of trademark jurisprudence.
Author: Archi Jain
Link to similar articles: https://jpassociates.co.in/trademark-infringement/
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THE WAITING GAME: HOW ACQUIESCENCE AND INTENTIONAL DELAY REDEFINE RIGHTS IN TRADEMARK DISPUTES
INTRODUCTION
Imagine a scenario, wherein,‘A’, the owner of ‘Oreon’ becomes aware of the recent existence ‘B’’s company ‘X-Oreon’, producing the same goods as that of ‘Oreon’, waits for ‘X-Oreon’ to build up a goodwill in the market and then 6 years into the knowledge of such usage, approaches the Court, alleging, inter alia, the infringement of his trademark and seeking remedy against B for the same.
Would such a remedy not only validate and encourage unreasonable delays in approaching the Court in case of infringement, but further put ‘B’ in a situation that is unduly disadvantageous? This is where the law of acquiescence comes in.
Acquiescence, in simple terms, means consenting to, or accepting certain violation without any protest. Being an equitable doctrine, law of acquiescence acts as an estoppel in pais and prevents a party from seeking a remedy (after the lapse of a particular time period) for the violation of a right which the party itself had earlier waived off through its conduct. Provided, that such time period was of the essence while seeking the remedy under consideration, in the first place.
The doctrine of acquiescence is not just a concept of Intellectual Property Law, but applies generally as an equitable principle, in all such circumstances wherein there exists an intentional delay in seeking remedy, which has exceeded the law of limitation. And is further supplemented by certain conduct of person entitled to a right that signifies waiver of such infringed right by person who was so entitled. This article however, shall restrict itself to the law acquiescence as it applies in the law of trademark, and shall be an attempt at exploring the overlaps and distinctions vis-à-vis acquiescence and other concepts within the same Venn.
ACQUIESCENCE UNDER TRADE MARKS ACT 1999
Section 33 of the Trade Marks Act, 1999 deals with the effects of acquiescence wherein the earlier proprietor, i.e., the one with the earlier trade mark, accepts the existence of the latter registered trade mark for a continuous period of 5 years, such proprietor of the earlier trademark no longer holds the right to apply for a declaration making the later registered trade mark invalid. Essential elements of section 33 may be summarised as:
Effects of acquiescence, as per Section 33:
1) Loss of right to challenge: i.e., after the exhaustion of 5 years, earlier proprietor is neither entitled to apply for declaration invalidating registration of the later trademark, nor is the earlier proprietor entitled to oppose such use of later registered trade mark. However, the usage referred to under section 33 is solely in reference to the goods or services to which the later registered trademark has till date applied.
Thus, where the trade mark of ‘A’ is used in relation to pharmaceutical products and the later registered trade mark of ‘B’ was being used with reference to cosmetics suddenly began producing pharmaceuticals, such a circumstance will not fall under the purview of section 33.
2) Mutual limitation: under sub section (2) of section 33, where all conditions necessary to the applicability of the section are met with, even the proprietor of later registered trademark holds no entitlement to oppose the usage of the earlier trade mark or to oppose the exploitation of the earlier right that the earlier proprietor still holds with respect to his respective trade mark.
MERE INACTION DOES NOT EQUATE TO ACQUIESCENCE
Time and again, the courts of law have reaffirmed their stance with regard to acquiescence requiring positive course of action. ‘Implied acquiescence’, or ‘deemed acquiescence’, or mere inaction, has not been recognised as rendering the right of the earlier proprietor as abandoned. There has to be certain extent of co-existence of positive factors that substantiate such inaction with the intention to waive off the right by the earlier proprietor under consideration.
In the case of Social Work and Research Centre v. Barefoot College International, 2023/DHC/001632, the Hon’ble High Court of Delhi has laid down, that- “for acquiescence or waiver to apply against a plaintiff,
(i) The plaintiff must be shown to have been sitting by, when the defendant was invading his rights,
(ii) The course of conduct of the plaintiff must be inconsistent with the claim,
(iii) The act of acquiescence has to be positive, and not mere inaction or silence,
(iv) The acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in the defendant,
(v) There must be conscious abandonment of an existing legal right, advantage, claim or privilege, as would amount to an agreement not to assert the right, and
(vi) Voluntary and intentional relinquishment of the plaintiff‟s right must be shown to have taken place.”
Further, the burden of proving acquiescence rests upon the person claiming such acquiescence. And for the same, the defendant alleging acquiescence must first prove that the mark of the defendant is a registered trademark which was registered in good faith. And that the earlier proprietor was aware of the existence and usage of such trademark in relation to the particular goods or services being the subject matter of the dispute for the past 5 years or more. Additionally, the defendant also has to prove that the awareness of the earlier proprietor was substantiated with such continuous conduct that has led to the conscious and voluntary abandonment of legal right that earlier existed with such proprietor in the first place.
ACQUIESCENCE AND LACHES
Laches refers to unreasonable delay and/ or neglect by the party seeking equitable relief, which has somehow prejudiced the other party, owing to said delay or neglect. Laches is thus another defence that is used against the claimant where the delay in seeking remedy brings about some undue disadvantage to the defendant owing to some change in position which could have been avoided by the vigilance and quick action of the claimant. Further, such a defence of laches can be used when there is no statutory bar, i.e., set period of limitation for approaching the Court to seek remedy.
So while both the doctrines- that of delay and laches and that of acquiescence involve the elements of delay and silence, laches is not to be confused with the doctrine of acquiescence, the latter basing itself upon equitable estoppel. And while laches extinguishes the remedy and not the right, acquiescence refers to virtually the exhaustion of the right itself, owing to the active acceptance of the violation.
The distinctions and the overlaps between the concepts of acquiescence and laches have been comprehensively discussed by the Hon’ble Apex Court time and again, such as in the case of Chairman, State Bank of India v. M.J. James, Civil Appeal No. 8223 of 2009, wherein it has been clarified that while both the concepts are based upon equitable considerations, acquiescence implies active consent, basing itself upon estoppel in pais, while laches includes even simple passivity.
And further, in the case of Union of India v. N Murugesan Etc. Civil Appeal Nos. 2491-2492 of 2021, where it has been elucidated upon that in a case restricting itself to merely laches and not extending to acquiescence, the principle of estoppel would be applicable to all defences available to a party and not just to particular issues concerned, as it would be in the case of acquiescence.
CRITICISMS AND CHALLENGES TO THE DEFENCE OF ACQUIESCENCE
CONCLUSION
The threat of potential misuse of the defence of acquiescence has led to a growing trend of brand monitoring in the age of social media and the evolution of artificial intelligence in curbing accidental acquiescence in the digital marketplace. The doctrine of acquiescence is not merely a defence for the bona fide subsequent user, but a constant reminder for the earlier proprietor that the protection of his intellectual property comes with a plethora of duties and the requirement of vigilance and immediate action where such rights are infringed.
And while both, acquiescence and laches are based upon equity and address delay in enforcing rights, acquiescence takes it a step further and signifies a waiver of rights through certain conduct of who would otherwise be entitled to such right. Section 33 of the Trademarks Act, 1999 thus provides a balance between trade mark protection and fairness, providing equity to both parties to the dispute.
However, the same comes with its own box of evidentiary and practical challenges, making the discretion of the courts while interpreting acquiescence on a fact to fact basis all the more crucial in reaching to an equilibrium that upkeeps the core of the statute while reinforcing concepts of good faith and vigilance that underpin the very foundation of trademark jurisprudence.
Author: Archi Jain
Link to similar articles: https://jpassociates.co.in/trademark-infringement/
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