Section 33 Trademark Act, 1999 says that if a trademark owner knows someone else is using a similar trademark but does nothing about it for a long time, they might lose the right to challenge that use. This rule ensures fairness by preventing owners from waiting too long to protect their trademarks while others build their own reputation with a similar trademark. For lawyers, trademark agents, and students, understanding Section 33 is essential because it often comes up in disputes about trademark infringement or cancellation. This article explains Section 33 in simple terms. It covers the law’s text, what it means, its key parts, and how courts use it.
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What is Section 33 Trademark Act?
To understand Section 33 Trademark Act, let’s look at its exact words. The section, called “Effect of Acquiescence,” is the foundation for defenses in trademark disputes. It focuses on awareness, time, and honesty in registering trademarks. It states that:
If the owner of an earlier trademark allows someone to use a similar registered trademark for five years straight, knowing about that use, they can no longer ask to cancel the later trademark’s registration, or stop the later trademark from being used for the goods or services it covers,
unless the later trademark was registered in bad faith.If the first part applies, the owner of the later trademark cannot stop the earlier trademark from being used, even if the earlier trademark could no longer block the later one.
Breakdown and Explanation of Section 33 TradeMark Act
Section 33 Trademark Act, 1999 addresses acquiescence where an earlier trademark owner loses the right to challenge a later registered trademark if they knowingly allow its use for five continuous years. It bars invalidation or opposition unless the later trademark was registered in bad faith, promoting fairness by preventing delayed objections.
Subsection (1): Principles of Acquiescence
Section 33(1) states that when an earlier trademark owner loses the ability to challenge a later registered trademark. The key is “acquiescence” for five years in a row. Acquiescence means the owner knows about the other trademark’s use but doesn’t try to stop it. This knowledge must be real, not just something they should have known.
After five years of this, the earlier owner cannot ask to cancel the later trademark’s registration or stop its use for the same goods or services. But there is an exception which says that if the later trademark was registered dishonestly like trying to copy the earlier trademark or trick customers, the owner can still challenge it. This rule stops dishonest registrations from getting protection.
In simple words, Section 33 acts like a legal block. It stops the earlier owner from enforcing their rights if they have ignored the issue for too long. This encourages owners to act quickly in order to protect their trademarks, keeping the trademark system fair and organized.
Subsection (2): Reciprocal Protection
Section 33(2) builds on this idea. If the earlier owner has acquiesced, the later trademark owner also can’t challenge the earlier trademark’s use. This creates a situation where both trademarks can exist without either side suing the other. It works even if the earlier trademark could have blocked the later one originally. This rule ensures fairness, so neither side can take advantage after the acquiescence period.
For lawyers, this part shows how Section 33 uses ideas like giving up rights (waiver) and legal fairness (estoppel) in trademark law
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Essential Elements for Establishing Acquiescence under Section 33 Trademark Act
To use Section 33 of Trademark Law in India as a defense, certain things must be true. First, there must be an “earlier trademark,” which could be registered or based on prior use, but the section mainly deals with registered trademarks. The “later trademark” must also be registered, as the law mentions a “registered trade trademark.”
Awareness: The earlier owner must know about the later trademark’s use. Courts have clarified that this requires evidence of knowledge, such as through market presence or correspondence. Just having the trademark listed in the trademark journal isn’t enough.
The five-year period must be continuous, with no breaks. If the owner sends a warning letter or takes any action during this time, the clock starts over. The use must also be for the same or similar goods or services.
Good faith: If the later trademark was registered dishonestly like copying the earlier trademark on purpose the acquiescence defense doesn’t work, and the earlier owner can still act.
The person using Section 33 as a defense, usually the one being sued, must prove all these things. This makes Section 33 a strong defense, but it needs solid evidence.
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Case Laws on Section 33 Trademark Act
Judiciary have explained Section 33 Trademark Act in cases mentioned below, saying acquiescence needs more than just knowing and doing nothing. It requires some kind of approval or encouragement.
In Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co. (1989), the Delhi High Court said that just knowing about a trademark and not acting isn’t enough for acquiescence. There must be some action showing the owner agrees to the use. This case set an important rule that silence alone doesn’t work for Section 33.
In Make My Trip (India) Pvt. Ltd. v. Booking.com B.V. (2022), the court rejected an acquiescence defense because the plaintiff didn’t actively support the defendant’s trademark use. The court said the earlier owner must clearly or indirectly agree to the use for Section 33 to apply.
In Khoday Distilleries Ltd. v. Scotch Whisky Association (2008), the Supreme Court talked about acquiescence in a case about geographical indications but compared it to trademarks. It said five years of knowing inaction could stop claims, as long as there was no dishonesty.
In Emcure Pharmaceuticals Ltd. v. Corona Remedies Pvt. Ltd. (2019), the Bombay High Court said acquiescence under Section 33 needs proof of continuous use and awareness. The defense failed because the use wasn’t consistent.
Implications and Applications in Practice
For trademark owners, Section 33 is a reminder to keep an eye on their trademarks and act quickly if someone uses a similar one. Waiting more than five years could mean losing the right to challenge that trademark. For those using a later trademark, Section 33 can protect them if they prove the earlier owner acquiesced, letting both trademarks coexist.
Section 33 Trademark Act affects negotiations to settle disputes, requests to cancel trademarks under Section 57, and lawsuits for infringement under Section 29. Lawyers often tell clients to keep records of when they learned about a trademark and what they did about it to either use or defend against this rule.
Summary
Section 33 Trademark Act, 1999, shows that trademark owners must act quickly to protect their rights. By including acquiescence, it balances the exclusive rights of trademark owners with fairness, avoiding harm to those who innocently use a similar trademark. For lawyers and legal experts, understanding this section helps them give better advice in trademark disputes. As courts continue to interpret Section 33, it plays a big role in creating a fair and active trademark system in India.
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Section 33 Trademark Act: FAQs
Q1. What is a Class 32 and 33 trademark?
Class 32 covers non-alcoholic beverages like juices and beers; Class 33 covers alcoholic beverages like wines and spirits.
Q2. What is Section 34 of the Indian Trademark Act?
Section 34 protects prior users of a trademark from infringement claims if they used it before the registered trademark.
Q3. What are the 4 types of trademarks?
The four types are product trademarks, service trademarks, collective trademarks, and certification trademarks.
Q4. What is Section 32 of the Trademark Act 1999?
Section 32 requires a registered trademark to be used within five years, or it may be removed for non-use.
Q5. What is Section 33 Trademark Act?
Section 33 prevents a trademark owner from challenging a later trademark if they knowingly allowed its use for five years.
