Registering a mark is only the start; enforcing it means staying vigilant. Watch someone use your mark and do nothing, and Section 33 can shut the door on an infringement suit after five years. Here’s how acquiescence works — and how to avoid it.
What acquiescence means
Acquiescence is passive consent — you know someone is using your registered mark and let it continue. Once that passive consent runs past the five-year statutory limit, you generally cannot sue for infringement: you’ve lost your chance.
What the law says
Section 33 lets the infringer raise acquiescence as a defence — provided they adopted and used the mark in good faith, meaning without knowledge of the mark they were infringing. The scope of the section has been questioned repeatedly, and ambiguity remains over whether it can defeat a permanent injunction.
The exception: dishonest adoption
Every rule has an exception, and here it is fraudulent or dishonest adoption. If an infringer applied for your mark (or a similar one) knowing it already existed, you can still sue — even after five years of inaction — so long as you prove the defendant’s mala fide intent. There’s no room to assume good faith where there is clear dishonesty; a court is justified in concluding the defendant wanted to cash in on your name and reputation.
That has been the consistent Indian trend, reaffirmed in Emcure Pharmaceuticals Ltd v. Corona Remedies Pvt Ltd, where the Bombay High Court held: “A mere failure to sue without a positive act of encouragement is no defence and is no acquiescence.” In short — mere delay is not acquiescence.
What the infringer must prove
The party pleading acquiescence carries the burden of establishing:
- the rights holder knew of the infringing activity;
- the rights holder engaged in encouragement — which can include inaction, such as failing to send a notice; and
- the infringer acted on that act or omission to their detriment.
Don’t sit on your rights
Behind the doctrine lies the purpose of trademark protection: letting an average consumer tell brands apart. You can’t have it both ways — sleep on your rights and you may lose them. The safe course is to take some “discouraging” action — at minimum a notice — as soon as you learn of the use, so passive consent never has a chance to form.
The takeaways
- Five years of passive consent can bar an infringement suit — act well before that.
- Mere delay isn’t acquiescence — it takes a positive act of encouragement (Emcure v. Corona).
- Dishonest adoption defeats the defence — prove mala fides and you can still sue.
- Send the notice. Even a simple objection breaks the chain of “encouragement.”
Frequently asked questions
What is acquiescence in trademark law? Passive consent to another’s use of your mark, with knowledge of it — which, once it crosses five years under Section 33, can bar you from suing for infringement.
Is delay in suing the same as acquiescence? No. As Emcure v. Corona confirms, mere failure to sue without a positive act of encouragement is not acquiescence.
Can I still sue if the infringer adopted my mark dishonestly? Yes — the acquiescence defence requires good faith; if you prove the defendant adopted the mark knowing of yours, you can sue even after five years.
What must an infringer prove to plead acquiescence? That the rights holder knew of the use, encouraged it (including by inaction), and that the infringer acted on that to their detriment.
Legislation referred to
- The Trade Marks Act, 1999