Article
Acquiescence: Being vigilant and not blind sided
By Pulkit Doger, Raghav Sarda and Sidharth Shahi
A registered proprietor of a trademark is required to remain cautious with respect to misuse of the trademark by others, failing which the registered proprietor may be disentitled from taking any legal action against the alleged offenders. Such disentitlement, referred to as ‘acquiescence’, therefore is a concept that every trademark owner must know and understand. The article in this issue of IPR Amicus discusses elaborately the provisions of Section 33 of the Trade Marks Act, 1999 while also analysing elements of acquiescence and burden of proof. Various Supreme Court and High Court decisions clarifying the concept have also been deliberated upon. According to the authors, the law relating to acquiescence serves to safeguard and protect the rights of a trademark user who has invested time, money, and effort in developing a business and a brand in good faith and without the knowledge that the mark is similar to that of an earlier registered mark. They also highlight that while the later user is safe from any action by the registered proprietor, the proprietor of later mark is itself barred from restricting the use of the earlier trademark...
Ratio Decidendi
- Designs infringement suit to be tried by High Court not having commercial division, by invoking extra ordinary original civil jurisdiction – Madhya Pradesh High Court
- Trademark infringement – Delay in instituting suit and suppression when fatal – Madras High Court
- Suspension of customs clearance of alleged IPR infringing goods – Customs when cannot continue suspension beyond 14 days – Bombay High Court
- Copyrights – Reproduction of artistic work in label – Mere use of different trade name not material – Gujarat High Court
- Trademark disputes arising from assignments under a family settlement are arbitrable – Delhi High Court
News Nuggets
- Copyright registration is not mandatory for seeking remedy of infringement
- Service of summons by all modes is not required
- Territorial jurisdiction of High Court – Apprehension of sale by defendant
- Meghalaya – Courts of Deputy Commissioner and Additional Deputy Commissioner are ‘District Courts’ within the meaning of Trademarks Section 134
- Trademark ‘Nature’s Tattva’ is visually, phonetically and deceptively similar to ‘Nature’s Inc.’ and conveys deceptively similar idea as ‘Nature’s Essence’
- Disparagement of product – Bombay HC directs a soap manufacturer to amend advertisements
