In the case at hand, a German-based medical equipment company, "the Plaintiff,"
initiated legal action against an Indian entity, "the Defendant," for passing
off under the Trademarks Act 1999. The Defendant attempted to invoke the defense
of acquiescence under Section 33 of the Trademarks Act, arguing that the
Plaintiff had acquiesced to their use of the trademark "VBM." This article
critically analyzes the court's decision to deny the defense of acquiescence to
the Defendant on the grounds that it was not a bona fide adopter of the
The Plaintiff, an established German company, had been using the trademark "VBM"
for its medical equipment since 1981. Despite not having an Indian registration,
the Plaintiff had a distributor in India who happened to be the father of the
Defendant. The Defendant claimed to have been using the domain name
www.vdmmedial.com since 2008 and subsequently secured the trademark registration
for "VBM" in India in 2015.
In 2020, the Plaintiff terminated its distributor agreement with the Defendant
and filed a complaint for passing off, asserting that the Defendant's use of the
trademark "VBM" was infringing upon its rights. In response, the Defendant
invoked the defense of acquiescence under Section 33 of the Trademarks Act 1999.
Analysis of the Court's Decision:
The central issue in this case revolves around the applicability of the defense
of acquiescence under Section 33 of the Trademarks Act 1999. Section 33 of the
Act provides protection to a person who has been using a trademark continuously
for a certain period, despite knowing of another person's prior use of a similar
or identical trademark. To successfully invoke this defense, it is essential
that the Defendant has to establish themselves as a bona fide adopter of the
The court, in its analysis, rightly considered several factors before
determining whether the Defendant was a bona fide adopter of the trademark "VBM."
These factors include the visual similarity between the Plaintiff's and
Defendant's marks, the timing of the Defendant's trademark registration, and the
circumstances surrounding the Defendant's adoption and use of the mark.
The court observed that the Defendant's adoption of a mark with such a striking
visual similarity to the Plaintiff's mark could not be dismissed as mere
coincidence. The visual similarity between the marks "VBM" and "VDM" could
potentially lead to consumer confusion, which is precisely what trademark law
aims to prevent.
Not a Bona Fide Adoption:
The court concluded that the Defendant had not secured the registration of the
mark in a bona fide manner. In other words, the Defendant's actions,
particularly the timing of the trademark application, indicated that they may
not have adopted the mark "VBM" with honest and legitimate intentions.
The Concluding Note:
The court's decision to deny the Defendant the protection of the defense of
acquiescence under Section 33 of the Trademarks Act 1999 is a well-reasoned one.
The court rightly recognized that this defense should only be available to
genuine adopters of a trademark who have used it continuously with good faith.
In this case, the Defendant's adoption of a visually similar mark, the timing of
the trademark registration, and the circumstances surrounding the adoption of
the mark all cast doubt on the Defendant's bona fides. Therefore, the court's
refusal to protect the Defendant's use of the trademark "VBM" under the defense
of acquiescence is a correct application of the law, preserving the integrity of
trademark rights and preventing potential consumer confusion.
Case Law Discussed:
Case Title:VBM Medizintechnik GMBH Vs Geetan Luthra
Date of Judgement:25/09/2023
Case No. CS Comm 820 of 2022
Neutral Citation No: 2023:DHC:7014
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: C Hari Shankar H.J.
Information and discussion contained herein is being shared in the public
Interest. The same should not be treated as substitute for expert advice as it
is subject to my subjectivity and may contain human errors in perception,
interpretation and presentation of the fact and issue involved herein.
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539