Acquiescence: Section 33

In one line

A proprietor who knowingly tolerates a later registered mark for five years loses the right to attack it, unless the later registration was applied for in bad faith.

In the wording a student can write in an exam: section 33(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 later 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; and section 33(2) provides that where sub-section (1) applies, the proprietor of the later mark is not entitled to oppose the use of the earlier trade mark either.

Why the section exists

Because a market settles. If a proprietor watches a rival build a business under a similar mark for years and says nothing, and then sues, the harm to the rival is out of all proportion to the harm the proprietor has suffered, and the public has meanwhile learned to tell the two apart.

And because the register should reflect the market. Section 33 turns a factual state of affairs, two marks coexisting, into a legal one.

Section 33(1) broken down

Six elements, and every one must be present.

1. An earlier trade mark, defined in the Explanation to section 11: a registered mark, an earlier section 18 application, an international registration under section 36E or a convention application under section 154 with an earlier date, or a mark entitled to protection as well known.
2. The later mark must be REGISTERED. Section 33 does not apply to an unregistered later user. Against him the proprietor's difficulty is delay and laches, not section 33.
3. Acquiescence, which is more than inaction: it connotes a state of affairs the proprietor has allowed to continue.
4. For a continuous period of five years.
5. Being aware of that use. Knowledge is essential, and it is the element most often unproved.
6. And the later registration must have been applied for in good faith. If it was not, section 33 does not protect it at all.

What is lost. Two things, and only two: the right to apply for a declaration of invalidity, and the right to oppose the use of the later mark. And only in relation to the goods or services in relation to which it has been so used, so acquiescence in one field does not license expansion into another.