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Effect of acquiescence in Trade Marks

Effect of acquiescence in Trade Marks

Most of us know that Registering a Trade Mark or even using it for enough time, so as to develop a secondary meaning, gives us legal rights. But what happens when we don’t act on these rights? To know, read further.

The concept of Acquiescence

Acquiescence means the tacit assent to an act or the absence of proactive objection. In law, it is the inaction of a party to seek legal remedy even after they are made aware of an infringement of their rights.  The words or conduct of the acquiescing party must be enough to induce others, to commit an act, believing in the representation made by the acquiescing party, who would have otherwise abstained from its commission.

This must be distinguished from the doctrine of laches and delay as those principles only destroy the remedy, not the right and acquiescence destroys the right as well.

Acquiescence as an estoppel

Acquiescence is an equitable remedy and a form of estoppel to restrain the courts from giving orders that would be practically unjust to one party because of the conduct of another.

Consider this situation:

‘A’ owns a house where he has put no security measures in place and ‘B’ enters the house. ‘A’ sees ‘B’ entering multiple times and yet, does not say anything. This leads ‘B’ to believe that A has not objection to ‘B’s entry to the house and rather, consents to the entry. In such a situation, an estoppel arises. This estoppel means that ‘A’ cannot question the legality of the others’ entry into the house who had faith in his consent.

Acquiescence in Trade Mark Law

The effect of acquiescence in case of trade marks has been specified under Section 33of the Trade Mark Act, 1999 that stops a proprietor from taking action against a registered Trade Mark on the ground of acquiescence. The salient features of this section are as follows:

  • This remedy is available to bar the proprietor of an earlier trade mark.
  • The party seeking the estoppel of acquiescence must be the proprietor/user of a later, registered trade mark.
  • This section is applicable only after 5 years or more of acquiescence.
  • The actions estopped are- declaration of the registration to be invalid and opposition to the use of the later trade mark.
  • However, this section does not entitle the proprietor/user of the later trade mark to oppose the use or exploitation of the earlier trade mark.
  • The only way that acquiescence would not apply even after 5 years, is if it is proven that the registration of the later trade mark was not obtained in good faith.

The case of Amritdhara Pharmacy v. Satyadeo Gupta

The fate of this case has seen twists and turns on each of the forums that it has been before. Satyadeo Gupta wanted to register his mark, ‘Lakshmandhara’ that he had been using since 1923, with respect to an Ayurvedic medical preparation. Amritdhara pharmacy opposed the registration on the grounds that it had been using ‘Amritdhara’ in respect of a similar medical preparation since 1901 and the registration of ‘Lakshmandhara’ was likely to deceive the public and cause confusion. The respondents claimed to be an honest concurrent user and sought remedy under the effect of acquiescence.

The Registrar found sufficient similarity in the two names to cause confusion. But, allowed the registration of ‘Lakshmandhara’ on the ground of acquiescence by the plaintiff.

On appeal to the Allahabad High Court, the court allowed the registration of ‘Lakshmandhara’ for the whole of India. On the point of acquiescence, the court held that acquiescence does not follow from the mere fact that both the products were being advertised in the same magazines and periodicals.

The Supreme Court, however, upon be appealed to, held that there was in fact, acquiescence as both the companies were using the same advertising medium.

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