Effect of Acquiescence in Trademark Law; Section 33

seo835
Jul 16
7 min read

Trademarks may sometimes be different and give rise to issues, for example, between older and newer marks. But the law has evolved some principles that tend to serve as clarification principles in such cases. One of the first among these principles is the Doctrine of Acquiescence. Generally, it is called, Effects of Acquiescence of Section 33, referring to when the owner of an older trademark deliberately allows the use of a later, registered trademark for a continuous period. This blog post entirely discusses Section 33 from its legal background, provisions, and practical implications on the ownership of trademarks.

Understanding the Context of Acquiescence

Trademark law is aimed at protecting the good name and reputation attached to a brand name, logo, or emblem. Conflicts result when both parties use somewhat similar marks on goods and services that are related. One such defence in these disputes is acquiescence, which is assumed when an earlier owner, through inaction, accepts the use of a later trademark. The underlying concept states that a party should be precluded from ultimately taking issue with a use it has tacitly accepted for a long period.

The Provisions of Section 33

Section 33 sets forth a rather broad rule that states that if the owner of earlier trademarks has acquiesced, that is, if with full knowledge that another has been using a registered later trademark for at least five continuous years, they would lose some rights in opposing that later registration. The provision has two main limbs:

1. Subsection (1): Loss of Rights Based on Earlier Trade Mark

This portion holds that the owner of the earlier trade mark loses any right to:

(a) Apply for a declaration that the later trade mark's registration is invalid, and

(b) Oppose the latter trade mark's use concerning goods or services for which it has been continually used unless it can be credibly argued that the registration of the later mark was done in bad faith, provided that there has been acquiescence for a continuous period of five years.

2. Subsection (2): The Reciprocal Effect on Later Trade Mark Owners

The application of subsection (1) also logically suggests that the owner of the later trade mark would also not be able to oppose any use of the earlier trade mark, even though such earlier trade mark can no longer be used against the later one.

Such provisions provide equal opportunity for such conduct for both parties over time to deter an instance where the trademark owner can revive a dormant right after having implicitly waived that opportunity.

Why a Five-Year Period?

Last but not least, Section 33 talks about the five-year requirements of continuous use. They kept that time frame at five years because trademark disputes can be quite serious and stability must be provided, along with fairness:

Clarity Through Inaction: A continuous period of five years without objection states that the earlier owner was aware of the later mark's use and chose not to interfere. The silence is treated as tacit approval. Therefore, though reluctant, the earlier owner has had this situation accepted by him.
Commercial Reality: Generally, five years need to be sufficient in the commercial sector for one to know the market terrain and competitive environment. If there are any potential infringements or disputes, one expects them to be reported in less than that time frame.
Prevention of Strategic Delay: These would dissuade such delay, where previously used trademark owners would wait until a new mark is registered prior to attacking it. This established a timeframe wherein the law encourages a timely objection if the injury seems genuine.

Good Faith Considerations

It does caveat that acquiescence will not bar challenges against a later registration if it is found to have been obtained not in good faith. Good faith involves honest intent and fairness in the said actions. The provision serves several purposes:

Dissuasion from Opportunistic Behaviour: A later bad faith trademark registration, by a party attempting to exploit the conditions under which an earlier registrant might otherwise be able to claim five years of acquiescence, will still be open to challenge. This is so, however, for the very limited grounds of good faith.

Equitable Treatment: With this provision of a good faith requirement by the law, the norm ensures that a later trademark is not given consideration by the law if procured with ill intent or deliberately intending to confuse the consumers.

Balancing Interests: The good faith exception provides a balancing act- genuine, honest commercial activity with its protection, avoiding keeping the opportunity open for dishonesty and guile to turn the parties against each other.

Practical Implications for Trademark Proprietors

For Earlier Trade Mark Owners

The earlier trademark owners must remain highly aware of the manner in which their rights are exercised in competitive markets. The following are some pointers for the owner of an earlier trademark:
Continuously monitor the use of the trademarks in trade since the earlier trademark owner would not want to run the risk of acquiescence. Whenever a later trademark that could confuse consumers pops up, an immediate reaction should be considered.
Enforcement within a reasonable time: Legal action should be taken to enforce the earlier trademark either swiftly or through negotiations before the 5-year period elapses, securing the rights of the trademark owner. This can include filing a notice of opposition, sending a cease-and-desist letter, or requesting declaratory relief.
Drawback of Lost Opportunity: If the earlier owner tolerated the use of the mark on the goods or services by the later marks that generate confusion, then they will be losing their grip on the market for the related goods or services. Lost opportunity for objecting to the later trademark equals limited possibilities in protecting its brand identity.

For Later Trade Mark Owners

For the latecomer, the following will be useful if acquiescence is found:

Legal protection: Once acquiescence is proven, the later owner of a mark is ordinarily protected from any challenges from the earlier owners, thus providing a certain degree of stability and clarity in the market.
Reciprocal rights: Such protection would deny the earlier owner the right to oppose any further use of the mark in respect of the same goods and/or services. This reciprocity is necessary to ensure fairness in respect of the market and prevent future disputes.
Promotion of bona fide applications: Therefore, more importance is now given to bona fide registration that only the bona fide trader shall benefit from this protection. It becomes the duty of the later owners to prove their bona fide registration in pursuing such rights.

Strategic Considerations and Legal Best Practices

For Earlier Trade Mark Owners

Proactive Legal Strategy: Setting up early surveillance on the market and being ready to take legal action is paramount. A trademark owner should invest heavily in regular market observation to catch potential infringements as early as possible.
Documentation of Objections: If an earlier proprietor chooses not to oppose a later mark initially, it is wise to document the reasons for this in internal records. This may help in future legal disputes to establish whether the acquiescence was truly inadvertent or a deliberate choice.
Negotiation and Settlement: Rather than suffering the consequences of an exhausting legal battle, some coexistence negotiations might be to the advantage of both parties. Such agreements might clearly define the respective lines of the market and rights of use without core litigation.

For Later Trade Mark Owners

Good Faith Keeping: Registration must be loud and well kept and be free of any kind of deception. Good faith is the foundation on which future protection under Section 33 rests for the eventual owner.
Markets Posturing: After acquiescence has been confirmed, mesmeric stamp owners may use this law to build their brand presence in the market. Therefore, there should be a target brand identity and real use of the mark in commerce.
Legal Preparedness: Though Section 33 bears some promise of protection, it is always safer for the later owners to be vigilant in monitoring legal threats. This would mean, primarily, close observation of the earlier marks' uses so that none of the subsequent activities jeopardizes the established holding.

The Broader Legal and Economic Implications

The implications of Section 33 stretch beyond individual trademark disputes to affect the market as well as intellectual property law in general. Some specific considerations include:

Market Stability: Section 33 encourages continuous and unchallenged use as a stabilizing factor in the marketplace within which few parties would be likely to engage in protracted litigation over trademarks, benefiting both consumers and businesses.
Fair Competition: The doctrine of acquiescence is one of the main components of maintaining a level playing field. This does not allow it to be construed as aggressive litigation tactics whereby an earlier owner attempts to block a later entrant solely based on historical usage, even though that might not have otherwise been vigorously enforced.
Incentives for Timely Action: The act provides incentives for both earlier and later trademark proprietors to act quickly. Earlier trademark owners should act expeditiously, while later owners should register and make good faith use of their marks.

Comprising an unnumbered hitherto, Section 33-acquiescence-works wonders in trademark disputes. It sets up a threshold of five years within which an action may be brought for opposing continuous use, thus attempting to give an element of certainty, married to predictability, to this complex area of law. The provision reconciles interests between earlier and later trademark owners in such a manner that, on the one hand, failure to timely object means certain losses for the earlier owner, but on the other hand, it places the burden on later owners, for example, to respond to any objection raised by the former.

Thus, Section 33 is no technicality but an affirmation of the larger principle that rights die easier with the neglect of time. What both the old and new owners of trademarks must learn is to keep on the ball: to always maintain transparency and fairness in their dealings. Such conduct is the very foundation upon which intellectual property rights are protected and the battlefield of fair competition is promoted.

While the rest of the world wrestles with brands and brand management and the fields of intellectual property law cover same, provisions such as Section 33 become a welcome reminder that the law promotes one who is faithful and transparent in all dealings; trademark protection is much more than registration-it is active enforcement in the diligent prosecution of rights.

Branded, therefore, with Section 33 is the levelling of opportunities in which legacy brands and new players can operate within the same geographical territory but, without illicit manipulation of the law, if all parties act in good faith and in a timely fashion. For anyone interested in trademark law, potential business proprietors, attorneys, or laymen law of acquiescence provides meaningful lessons regarding the rise (or fall) of rights through inactivity and the corresponding flexibility of legal doctrines in responding to fast-mutating market realities.

By understanding and acting under the principles of Section 33, more and more trademark proprietors will be able to gauge better their options, protecting their investments and thus contributing substantially to a fairer and more predictable intellectual property system.

Author: Daisy Banakhede, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.