Use of Trademark — Genuine Use, Acquiescence (Section 33)

Section 33 of the Trade Marks Act, 1999 is the temporal-bar defence in trade-mark infringement and invalidation. It declares that the proprietor of an earlier trade mark who has acquiesced for a continuous period of five years in the use of a later registered trade mark — being aware of that use — shall no longer be entitled, on the basis of that earlier mark, either to apply for a declaration that the registration of the later trade mark is invalid or to oppose the use of the later trade mark in relation to the goods or services in respect of which it has been so used. The bar does not operate where the later mark was not applied for in good faith.

Acquiescence under Section 33 is rooted in a settled principle of equity: "no party who sleeps over his right should be entitled to relief". The provision is, in substance, a statutory codification of the law of laches and acquiescence as applied to the trade-mark register. Its function is to bring stability to the register after a five-year window of conscious inaction by the senior proprietor. The provision sits alongside the general infringement scheme in Section 29 on infringement of a registered trademark as the principal temporal-bar limit on the senior proprietor's right of action.

Statutory anchor — Section 33

Section 33 reads in two sub-sections. Sub-section (1) provides that where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trade mark, being aware of that use, he shall no longer be entitled on the basis of that earlier trade mark — (a) to apply for a declaration that the registration of the later trade mark is invalid; or (b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used, unless the registration of the later trade mark was not applied for in good faith.

Sub-section (2) carries the symmetry: when sub-section (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark or, as the case may be, the exploitation of the earlier mark, notwithstanding that the earlier trade mark may no longer be invoked against his later mark. The two clauses lock the parties into a regime of mutual coexistence after the five-year window has closed.

Three statutory ingredients emerge: (i) an earlier trade mark and a later registered trade mark, the latter being on the register; (ii) acquiescence by the earlier proprietor for a continuous period of five years; and (iii) awareness by the earlier proprietor of the use of the later mark during that period. The good-faith proviso operates as a carve-out: if the later mark was not applied for in good faith, the five-year bar does not run. The expression "earlier trade mark" is given the same operational meaning as in the Section 2 definitions, and a registered later mark is one that has emerged from the full effect of registration under Section 28.

What "acquiescence" means — more than silence

Acquiescence is not merely silence or inaction such as is involved in laches. It is a course of conduct inconsistent with the claim for an exclusive right in the trade mark. In acquiescence, the proprietor of the trade mark sits by and turns a blind eye when another is using his trade mark and thereby invading his rights and spending money in setting up his business.

The Delhi High Court in Sudhir Bhatia v. Midas Hygiene Industries (P) Ltd. 2002 (24) PTC 94 (Del) put the equitable basis crisply: "if a party adopts a sort of Rip Van Winkle policy of going to sleep and not watching what his rivals and competitors in the same business were doing they are disentitled to any injunction". The respondent in that case had used the original trade mark LAXMAN REKHA; the appellant had used the trade mark MAGIC LAXMAN REKHA. The respondent's inaction for five years had permitted the appellant to make endeavours to increase its business vigorously by using the trade mark MAGIC LAXMAN REKHA. Silence for five years, the court held, showed an element of acquiescence on the part of the respondent. The relief of interim injunction was therefore not granted in favour of the respondent.

The Delhi High Court refined the doctrine in Jolen Inc. v. Doctor & Company 2002 (24) PTC 29 (Del). The court observed that in trade-mark cases the plea of acquiescence is available only if the defendant proves that the plaintiff has been not only standing by but also turning a blind eye for a substantial period. If the defendant succeeds in proving that conduct, then the plaintiff cannot be allowed to trample upon and crush the business of the trade set up by the defendant. The standard is therefore not mere passivity but a course of conduct inconsistent with assertion of right — knowledge plus tolerance plus an investment by the junior user that would be unjustly destroyed by belated assertion of the senior right.

The five-year window — when does it run?

The five-year window in Section 33(1) starts to run from the date on which the senior proprietor becomes aware of the use of the later registered mark. Until awareness can be attributed to the senior proprietor, the clock does not run. Knowledge cannot be presumed; it must be pleaded and, where necessary, proved.

Two further temporal points are critical. First, the five years must be continuous. Intermittent or sporadic use that the senior proprietor opposes or interrupts will not let the clock run. Second, the later mark must be a registered trade mark — the words of Section 33(1) make this explicit, and the requirement is jurisdictional. Section 33 does not bar the senior proprietor from challenging an unregistered mark, however long it may have been used.

The scope of the registration requirement was the central holding in Carrefour v. V. Subburaman 2007 (35) PTC 225. The applicant, the proprietor of the well-known mark CARREFOUR (used since 1960 for retail across 30 countries), brought a passing-off suit against the respondent who had used CARREFOUR for furniture from July 2000 and had applied for registration in 2001 without obtaining it. The respondent pleaded acquiescence under Section 33 on the strength of more than five years of use. The court rejected the plea: "the respondents should not only prove knowledge on the part of the applicant foreign party but also prove use of the mark for a continuous period of 5 years. The words 'acquiesced for a continuous period of 5 years in the use of a registered trade mark' appearing in Section 33(1) make it clear that such acquiescence by the proprietor of an earlier mark, should be in relation to a registered trade mark. The respondents have not so far obtained registration of the trade mark. Therefore, the applicant who claims to be the proprietor of the earlier mark cannot be said to have acquiesced in the use of registered trade mark by the respondents". The lesson is that an unregistered later user cannot anchor a Section 33 bar; he must complete his registration before the five-year clock can begin.

The good-faith proviso

The bar in Section 33(1) does not apply where the registration of the later trade mark was not applied for in good faith. The proviso operates as the principal escape valve for the senior proprietor. "Bad faith" exists, in the standard formulation, where the person who registers or uses the conflicting mark knew of the well-known or earlier mark and presumably intended to profit from the possible confusion between that mark and the one he has registered or used. The determination of good faith is one of fact, vested in the discretion of the Registrar or the appellate forum.

The Carrefour court took the non-explanation of the reason for choosing the mark — a factor closely tied to the absolute-grounds inquiry under Section 9 on registrability — as evidence of bad faith. The respondent was a furniture dealer in India. The court asked: how did the respondent come to adopt a French word — "crossroad" — for the marketing of furniture in India? The absence of a credible answer was treated as a marker of bad faith and reinforced the rejection of the Section 33 plea. The principle is that an honest adoption demands an honest origin story; absence of the latter, in cases of pre-existing reputation of the earlier mark, will frequently signal absence of the former.

Acquiescence and well-known marks — the Section 11 interaction

Section 33 must be read with Section 11(11), which protects trade marks already registered or used in good faith before the commencement of the 1999 Act from being unsettled by the new well-known-mark regime. The proprietor of a well-known mark cannot, in future, take action against trade marks already vested with rights at the commencement of the Act if those rights were obtained in good faith. But where rights were not obtained in good faith — or were obtained after the commencement — the well-known mark proprietor may proceed; and Section 33 imposes a five-year acquiescence window on that proceeding once the offending later mark is on the register.

The combined operation is: the well-known mark proprietor, on becoming aware of the use of a later mark in circumstances specified in Section 11(1) to (3), can challenge the registration of that later mark only up to five years from the date of awareness. Once the five years have run, even a well-known mark proprietor is barred. The interlock between the relative-grounds regime under Section 11 and Section 33 is therefore a defining feature of the Indian well-known-mark architecture: the enlarged rights of the well-known mark proprietor are subject to the same temporal discipline that applies to ordinary earlier marks.

Carrefour also illustrates the interaction with Section 29(4). The court determined that CARREFOUR was a well-known mark in India. It treated the respondent's use of the mark on furniture for more than five years as insufficient acquiescence under Section 33 because the respondent's mark was not registered. But the court noted that, in a Section 29(4) action, what is required is a finding on the reputation of the registered mark — there is no need for a separate finding that the mark is a well-known mark. The dilution head in Section 29(4) on tarnishment and dilution operates on its own ingredients; Section 33 supplies a temporal bar across all the heads.

Genuine use and the policy behind "use"

Although the express object of Section 33 is acquiescence, the provision is sustained by a broader policy of "genuine use" running through the Act. A registered trade mark is, in principle, granted to indicate origin in trade. Where the proprietor neither uses the mark himself nor permits its use by a registered or permitted user, the register fills with dead-wood entries that obstruct the legitimate trade of others. The 1999 Act addresses this concern through several distinct but related mechanisms.

The first is the statutory recognition that property in a trade mark may be lost. As the Bombay High Court observed in Consolidated Food Corporation v. Brandon & Co. AIR 1965 Bom 35, registration itself does not create a trade mark — the trade mark exists independently of the registration, which merely affords further protection under the statute. Property in a trade mark can be acquired under common law by continuous use or by registration under the Act; it can be lost in many ways: in the case of a registered trade mark by non-payment of renewal fee and for other reasons, and in the case of a common-law trade mark by non-use for a length of time or by unrestricted piracy.

The second mechanism is the renewal regime in Section 25 on duration, renewal and removal, which sets the ten-year cycle and provides for restoration. The third is the deemed-use principle in Section 48(2), under which the permitted use of a trade mark by a registered or permitted user is deemed to be use by the proprietor for any purpose under the Act including, importantly, the question whether the mark has been used. The fourth is the acquiescence rule in Section 33 itself, which fixes a five-year window after which a senior proprietor's silence is treated as constructive consent to the later registered mark.

Carrefour v. V. Subburaman — the leading Indian decision

Carrefour v. V. Subburaman 2007 (35) PTC 225 is the most-cited modern decision on Section 33. The applicant, a French retail chain operating 7000 stores in 30 countries with 2500 trade-mark registrations worldwide, had used the mark CARREFOUR — a French word meaning "crossroad" — in its retail business since 1960. It had no physical presence in India. The respondent, an Indian furniture dealer, began using CARREFOUR for furniture in July 2000 and applied for registration of the mark for furniture in 2001.

The applicant brought a passing-off suit. The respondent pleaded that the mark had been adopted honestly and that, in any event, more than five years of use entitled him to the benefit of acquiescence under Section 33. The court rejected both pleas. On honest adoption, the court found the absence of any credible explanation for the choice of a French word for furniture in India to be evidence of bad faith. On Section 33, the court held that acquiescence requires use of a registered later trade mark; the respondent's mark, having only been applied for, did not satisfy the statutory threshold. The court added an important systemic observation about Section 11(11): the immunity granted to existing trade marks from the new well-known-mark regime extends to common-law passing-off proceedings under Section 27(2), but only where the existing use was in good faith.

The Carrefour court identified four propositions that are now treated as the standard exposition of the Section 33 framework. First, the five-year clock requires both knowledge of the use and use of a registered (not merely applied-for) later mark. Second, the burden of proving each ingredient lies on the defendant who pleads the bar. Third, bad faith on the part of the later applicant disqualifies the bar entirely. Fourth, the determination of well-known status is required for Section 11(2) purposes but is not a precondition for Section 29(4); the dilution head requires a finding on reputation, not on well-known status.

Acquiescence as a defence in passing off

Acquiescence is also recognised as an equitable defence in passing-off actions outside the express terms of Section 33. The defences in passing off, as catalogued in the case-law, include the plea that the plaintiff is not entitled to relief on account of delay, estoppel, acquiescence, deceptive use of the mark, misrepresentation of facts or fraudulent trade. The acquiescence here is the common-law version — not bound by the five-year statutory window of Section 33, but governed by the wider equitable inquiry into whether the plaintiff has stood by while the defendant invested in his business.

The relationship between common-law acquiescence in passing off and statutory acquiescence under Section 33 is therefore one of overlapping but distinct doctrines. Section 33 supplies a hard, calendar-counted bar where its three ingredients are met; common-law acquiescence supplies a softer, equity-based bar that can operate even where Section 33 does not — for example, where the later mark is unregistered. A plaintiff seeking interim relief should expect both pleas to be tested.

Acquiescence distinguished from cognate doctrines

Acquiescence vs laches. Laches is mere delay; acquiescence is delay coupled with knowledge and conduct inconsistent with the assertion of the right. The Delhi High Court in Jolen Inc. v. Doctor & Company made the distinction explicit — the plea of acquiescence requires not only standing by but also turning a blind eye for a substantial period.

Acquiescence vs estoppel. Estoppel arises where the defendant has been induced by the plaintiff's conduct to act to his detriment. Acquiescence is broader: it operates on the senior proprietor's silence in the face of known infringement, even without an active inducing representation. In trade-mark practice the two pleas are often run together because the conduct that creates acquiescence often also satisfies the estoppel ingredients.

Acquiescence vs the Section 30 defences. The Section 30 limitations on the effect of a registered mark are act-specific defences — they protect defined categories of use (descriptive, accessory, with consent, exhausted goods) regardless of how long they have continued. Section 33 is a temporal-bar defence — it operates against the assertion of the senior right after five years of conscious inaction. The two operate independently and a defendant may invoke both in appropriate cases.

Pleading and proof

A defendant invoking Section 33 must plead and prove three specific facts: (a) that he holds a registered trade mark; (b) that the senior proprietor has been aware of his use of that registered mark for a continuous period of five years; and (c) that the senior proprietor has, during that period, failed to take any action — whether by way of opposition, infringement suit, rectification proceeding, or other assertion of right.

The senior proprietor seeking to defeat the plea may rely on (a) absence of the registration, (b) absence of awareness, (c) absence of continuity, or (d) the bad-faith proviso. The bad-faith plea is, in many cases, the most effective: an opposing party with a strong reputation can frequently establish that the later applicant could only have known of the senior mark and could only have intended to ride on its goodwill. The Carrefour court treated such reasoning as decisive.

Effect of the bar — mutual coexistence

The proprietor's right to assign or transmit a mark — governed by Sections 37 to 45 on assignment and transmission — is not affected by an operative Section 33 bar; the senior proprietor retains the property in his earlier mark and may deal with it, but he may not sue the later registered proprietor on the basis of that earlier right alone. Once Section 33(1) operates, two consequences follow. First, the senior proprietor cannot challenge the validity of the later registration or oppose the use of the later mark in respect of the goods or services for which it has been used. Second, by Section 33(2), the later proprietor cannot oppose the continued use or exploitation of the earlier trade mark either. The result is mutual coexistence: both marks remain on the register, neither party may sue the other on the basis of his own registration alone, and the public is left to discriminate between them by reference to additional marketing context. The regime is designed to deliver finality after the five-year window, not victory to either side.

Practical and exam takeaways

For state judiciary mains, CLAT PG and SEBI Legal Officer papers, Section 33 is most often tested through:

1. The three ingredients of Section 33(1) — earlier and later registered marks, five years of continuous acquiescence, and awareness on the part of the senior proprietor — and the good-faith proviso.
2. The Carrefour holding that the later mark must be registered, not merely applied for, before the five-year clock can begin to run.
3. The Sudhir Bhatia / Midas Hygiene formulation that acquiescence is more than mere silence — it is a course of conduct inconsistent with the claim for exclusive right.
4. The Jolen Inc. distinction between standing by and turning a blind eye on the one hand, and pure inaction on the other.
5. The mutual-coexistence consequence under Section 33(2) and the systemic interaction with Section 11(11) and the well-known-mark regime.

The two recurring errors are (a) treating acquiescence as a synonym for laches — it is not; acquiescence requires knowledge plus inaction plus investment by the junior user — and (b) starting the five-year clock from a date earlier than the senior proprietor's awareness or from a date when the later mark was merely applied for and not yet registered. A prudent answer always names the three ingredients, addresses the good-faith proviso, and cites Carrefour for the registration requirement and Sudhir Bhatia for the equitable formulation. For the wider context of how the register is built and maintained, see also our chapters on the registration procedure under Sections 18 to 24 and on opposition under Section 21.

Frequently asked questions

When does the five-year acquiescence clock under Section 33 begin to run?

The clock begins on the date the senior proprietor becomes aware of the use of the later registered mark, and the five years must be continuous. Awareness cannot be presumed and must be pleaded and, if disputed, proved. The Carrefour decision is emphatic on a related point: the later mark must already be registered, not merely applied for, before the clock can start. Use of an unregistered mark, however long, will not anchor a Section 33 bar; it can at most ground a common-law acquiescence plea in a passing-off action.

What is the difference between acquiescence and laches?

Laches is mere delay in asserting a right. Acquiescence is delay coupled with knowledge and a course of conduct inconsistent with the assertion of the right. The Delhi High Court in Jolen Inc. v. Doctor & Company 2002 (24) PTC 29 (Del) put the distinction precisely: acquiescence is available only where the defendant proves that the plaintiff has been not only standing by but also turning a blind eye for a substantial period. The Sudhir Bhatia decision uses the Rip Van Winkle metaphor — a party who goes to sleep while his rivals build up business is disentitled to injunctive relief. Pure inaction without knowledge is laches; knowing inaction that lets the junior user invest is acquiescence.

Does the bad-faith proviso defeat the Section 33 bar?

Yes. Section 33(1) opens with the bar but closes with a proviso: "unless the registration of the later trade mark was not applied for in good faith". Where the later applicant knew of the senior mark and was attempting to profit from the confusion between the two, the five-year bar does not run. The Carrefour court treated the absence of a credible explanation for the adoption of a French word for furniture in India as evidence of bad faith. The good-faith inquiry is one of fact, decided on the totality of circumstances surrounding the application.

Can acquiescence under Section 33 be pleaded against a well-known mark?

Yes, in principle, but the well-known-mark regime under Section 11(6) to (11) interacts with Section 33 in two ways. First, Section 11(11) protects existing trade marks registered or used in good faith before the commencement of the 1999 Act from being unsettled by the new well-known-mark rights — this is a complete immunity, not a five-year bar. Second, where the well-known mark proprietor is entitled to take action under Section 11, that action is itself subject to the five-year acquiescence window in Section 33. Carrefour rejected the Section 33 plea because the later mark was not registered, not because Section 33 is unavailable against well-known marks.

What happens once Section 33(1) operates — does one mark prevail over the other?

Neither prevails. By Section 33(2), once the bar in sub-section (1) operates, the later proprietor is not entitled to oppose the use or exploitation of the earlier trade mark either. The result is mutual coexistence: both marks remain on the register, the senior cannot challenge the later registration on the basis of his earlier mark, and the later cannot challenge the senior on the basis of his later registration. The public is left to discriminate between the marks through marketing context. Section 33 is designed to deliver finality and stability to the register after the five-year window, not victory.