Prolonged inaction despite knowledge of a later mark constituted acquiescence barring rectification.

RPG Enterprises Limited sought rectification under Section 57 of the Trade Marks Act, 1999, of the registration of “RPG Marble Pvt. Ltd.” (Device), registered in Class 42 in the name of RPG Marble Pvt. Ltd.

The petitioner alleged that the mark incorporated its “RPG” mark and was wrongly on the Register.

The respondents said they had adopted and used the mark from 2000, deriving “RPG” from directors’ initials, and contended that the petitioner had known of their use since a legal notice issued in 2002.

The petitioner disputed prior knowledge and said it learned of the respondents’ use in 2017.

At trial, the petitioner’s witness was examined and documents were marked; the respondents relied, among other things, on the petitioner’s subsidiary’s 2016–2017 annual report referring to the law firm said to have issued the 2002 notice.

The Court decided the acquiescence issue first and did not determine the remaining issues on the merits.

1. Whether the petitioner’s rectification petition was barred by waiver, delay, laches or acquiescence, including under Section 33 of the Trade Marks Act, 1999.

2. Whether the respondents’ registration was liable to rectification under Section 57, and the other framed issues concerning adoption, prior rights and the petitioner’s well-known mark. These issues were not decided on their merits.

Section 57 of the Trade Marks Act, 1999 provides for rectification or removal of a mark from the Register where the statutory grounds are established.

The Court considered Section 33 in relation to the respondents’ plea of acquiescence.

Relying on Union of India v. N. Murugesan, (2022) 2 SCC 25, the Court stated that acquiescence involves tacit or passive acceptance, inferred from a party’s knowledge of the relevant circumstances together with its conduct or failure to object within a reasonable time; where followed by delay, it may amount to laches, assessed on the facts of each case.

The respondents also relied on Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel, Khoday Distilleries Ltd. v. Scotch Whisky Association and Power Control Appliances v. Sumeet Machines Pvt. Ltd.

The Court found that the petitioner’s witness gave evasive evidence about the alleged 2002 notice and the law firm said to have sent it.

The witness did not categorically deny the firm’s name when confronted with the petitioner’s subsidiary’s annual report, responding only that it “might be right”.

The Court treated this evidence as supporting the respondents’ assertion that the petitioner knew of the respondents’ adoption and use of the mark in 2002.

Given the petitioner’s subsequent inaction until filing the rectification petition in 2017, the Court held that the delay, in the circumstances, constituted acquiescence.

It therefore did not examine the substantive grounds for rectification or the other framed issues.

The other issues were left undecided.

It dismissed the Transfer Original Petition and closed the connected miscellaneous application, with no order as to costs.