Section 33 of trademark Act with reference to case law
Section 33 in The Trade Marks Act, 1999 states the effect of acquiescence.—
(1) 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 in good faith.
(2) Where 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 right, notwithstanding that the earlier trade mark may no longer be invoked against his later trade mark.
This means that if the later party has informed the earlier party about the trademark and the earlier party is reluctantly but without any opposition accepts for 5 continuous years then the earlier party is no longer entitled to get to considered as invalid or to oppose its use.
This section was interpreted in the case of Make My Trip (India) Pvt Ltd v. Make My Travel (India) Pvt Ltd (CS(COMM)889/2018)
The facts of the case are such that make my trip is one of those booking sites who have grown with time expanding worldwide. They were fighting on the issue against Make My Travel that:
All these were quite similar to their own word mark, tagline and website and thus they sought for permanent injunction against the same. Also they both served similar services to a similar group of customers and thus it creates misconceptions and misunderstanding for the consumers out there and hampering their market image and value.
On the beginning of the suit that’s in 2018 an Ad interim injunction was passed in the favour of the plantiff.
Defendants arguments were based on the fact that since due to previous conversations between the parties the plaintiff was known to the fact and in last 5 years they didn’t object so their claims doesn’t have a standing
But the court in its decision said that for the applicability of section 33 the acceptance of the plaintiff even if in reluctance is importance is important and a key ingredient and since no such acceptance can be found in this case the plaintiff thus the use of signs by Make My Travel was held impugned.
Section 33 of trademark Act with reference to case law
Section 33 in The Trade Marks Act, 1999 states the effect of acquiescence.—
(1) 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 in good faith.
(2) Where 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 right, notwithstanding that the earlier trade mark may no longer be invoked against his later trade mark.
This means that if the later party has informed the earlier party about the trademark and the earlier party is reluctantly but without any opposition accepts for 5 continuous years then the earlier party is no longer entitled to get to considered as invalid or to oppose its use.
This section was interpreted in the case of Make My Trip (India) Pvt Ltd v. Make My Travel (India) Pvt Ltd (CS(COMM)889/2018)
The facts of the case are such that make my trip is one of those booking sites who have grown with time expanding worldwide. They were fighting on the issue against Make My Travel that:
All these were quite similar to their own word mark, tagline and website and thus they sought for permanent injunction against the same. Also they both served similar services to a similar group of customers and thus it creates misconceptions and misunderstanding for the consumers out there and hampering their market image and value.
On the beginning of the suit that’s in 2018 an Ad interim injunction was passed in the favour of the plantiff.
Defendants arguments were based on the fact that since due to previous conversations between the parties the plaintiff was known to the fact and in last 5 years they didn’t object so their claims doesn’t have a standing
But the court in its decision said that for the applicability of section 33 the acceptance of the plaintiff even if in reluctance is importance is important and a key ingredient and since no such acceptance can be found in this case the plaintiff thus the use of signs by Make My Travel was held impugned.
