The Trademark Act, 1999
Section 33, Effect Of Acquiescence
Abstract
Section 33 of :contentReference[oaicite:0]{index=0} says that if a trademark owner knows someone else is using similar trademark but do nothing in a period of five years in the use of a registered trademark. They might lose the right to challenge the use. This rule ensures fairness by preventing owners from waiting too long to protect their trademarks while others build their own reputation with a similar trademark. The key is acquiescence for 5 years in a row. “Acquiescence” means the owner knows about the other trademark use but doesn’t try to stop it.
What Is Section 33 Of Trademark Act?
It is the foundation for defenses in trademark disputes. It focuses on awareness, time and honesty in registering trademarks. Red in bad faith.
If the owner of an earlier trademark allows someone to use a similar registered trademark or 5 years straight, knowing about that use, they can no longer ask to cancel the later trademark registration or stop the later trademark from being used for the goods or services it covers unless the later trademark was registered in bad faith.
If the first part applies, the owner of the later trademark cannot stop the earlier trademark from being used even if the earlier trademark could no longer block the later one.
Explanation Of Section 33
Section 33(1)
Section 33(1) states that when an earlier trademark owner loses the ability to challenge a later registered trademark. After 5 years of registration, the first owner cannot ask to cancel the later trademark registration or stop its use for the same goods or services. But there is an exception which says that if the later trademark was registered not honestly and like trying to copy the first trademark or trying to spread false information in customers then the owner can still challenge it.
- In simple words, this acts like a legal block (silent consent).
Section 33(2)
Section 33(2) states that if first owner gives consent to second owner then the second owner also cannot challenge the first owner. It creates a situation where both trademarks exists in a market without filed a case. It also works when first trademark block the second one. It ensures fairness, neither party can take advantage after the acquiescence period.
Key Elements At A Glance
| Element | Description |
|---|---|
| Acquiescence Period | 5 years in a row |
| Knowledge | Owner knows about the other trademark use |
| Inaction | Owner does not try to stop the use |
| Exception | Later trademark registered in bad faith |
| Effect | Loss of right to cancel or stop use |
Case Law: Emcure Pharmaceuticals Ltd. Vs. Corona Remedies Pvt. Ltd.
Case Facts
- In 1996, Plaintiff, the Plaintiff marks OROFER and OROFER-XT were registered.
- In 2006, the plaintiff noticed the defendant advertisement in the trademark journal towards registration of the mark COROFER in Class 5.
- In 2007, the plaintiff attorney sent a notice to the defendant.
- Plaintiff opposed the defendant registration application on 20/12/2007.
- Defendant claimed to have commenced use of its mark in 2001 for an iron supplement.
- Plaintiff claims to have made enquires, but no evidence found against defendant products.
- Plaintiff send a second notice to the defendant in 2009 after the dealer of plaintiff reported COROFER branded products in the market.
- Defendant added XT word in COROFER and started selling his products with name of COROFER-XT.
- The plaintiff filed the suit on 07/09/2013.
- In 2014, Bombay High Court Judgement in this case was a trademark infringement case that granted an interim injunction to Plaintiff.
Court Findings
The court held that defendant’s ‘COROFER’ and ‘COROFER-XT’ marks were deceptively similar to plaintiff’s ‘OROFER’ and ‘OROFER-XT’ marks, emphasizing public interest in preventing confusion over pharmaceutical products.
Key Aspects of Judgement
- Deceptive Similarity
- Public Interest in Pharmaceuticals
- Acquiescence and Delay
- Burden of Proof for Prior Use
Summary
Section 33 of the Trademark Act, 1999 establishes that a trademark owner may lose the right to challenge a similar trademark if they do not act against its use for five consecutive years. This rule, which emphasizes the concept of “acquiescence,” aims to prevent trademark owners from waiting too long to protect their rights, allowing others to build a reputation with similar marks.
Section 33 outlines two main points:
| Point | Description |
|---|---|
| Point 1 | After five years, if an earlier trademark owner has allowed the use of a later trademark, they cannot cancel it unless registered in bad faith. |
| Point 2 | If consent is given by the earlier owner, they cannot then challenge the later trademark. |
The case of Emcure Pharmaceuticals Ltd. Vs. Corona Remedies Pvt. Ltd. illustrates these principles, particularly concerning deceptive similarity and the importance of public interest in pharmaceuticals, where the court ruled in favor of the plaintiff based on trademark similarities and public confusion, highlighting the significance of acquiescence and delay in proving prior use.
