Acquiescence in Trade Mark Rectification: A Critique of RPG Enterprises v. RPG Marble (Madras HC, 2026)

Introduction

In RPG Enterprises Ltd v. Registrar of Trade Marks & Ors, (T)OP(TM) No. 482 of 2023, the Madras High Court, by its judgment dated 28 September 2026, dismissed a petition to remove “RPG MARBLE PVT. LTD.” (device), Registration No. 1474334 dated 28 July 2006 in Class 42, from the register. The petition failed on one ground alone: acquiescence under Section 33 of the Trade Marks Act, 1999. The Court found that the petitioner knew of the respondent's mark from a 2002 legal notice and waited until 2017 to act.

Facts and procedural history

The petitioner, RPG Enterprises, claims use of “RPG” since 1979 and holds registrations in Classes 5, 9, 12, 16 and 30. The second respondent, RPG Marble Pvt. Ltd., trades in marble, granite and stone and claims that “RPG” was coined from the initials of its directors — Rajkumar Ladha, Pawan Kumar Gupta and Giriraj Ladha.

Issues and the Court's reasoning

The Court framed eight issues on 26 April 2024 and decided only one. The issues were:

1. Whether the second respondent's registration was liable to be removed under Section 57;
2. Whether the respondent adopted the mark fraudulently and dishonestly;
3. Whether the petitioner's mark “RPG” was known to the public when the respondent adopted its mark, and whether that adoption was justified;
4. Whether the petitioner was a “person aggrieved” within the meaning of Section 57;
5. Whether the petition was barred by waiver, delay, laches and acquiescence;
6. Whether the well-known status of the petitioner's mark has retrospective effect on the second respondent's mark;
7. Whether the petitioner is entitled to the reliefs sought; and
8. Whether the petitioner is entitled to any other relief.

The Court took Issue (v) first (para 32). It found that PW1's evasive answer, read with Ex. R2, supported the respondents' case that the petitioner knew of the mark in 2002 (para 35). It then adopted the definition of acquiescence in Union of India v. N. Murugesan, (2022) 2 SCC 25: “a tacit or passive acceptance,” inferred from knowledge plus failure to object within a reasonable time (paras 36–37).

Applying that test, it held that fifteen years of “prolonged inaction” after 2002 “constitutes acquiescence” and brought the petition “squarely” within Section 33 (para 37). Having so held, it said the remaining issues “need not be deliberated upon in detail” (para 38) and dismissed the petition (para 40).

The statutory framework

Section 33(1) reads:

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 …

unless the registration of the later trade mark was not applied in good faith.

Each phrase is a condition. The table sets them against what the judgment found.

Section 57 supplies the remedy. A “person aggrieved” may seek removal of an entry made “without sufficient cause” or “wrongly remaining on the register.” The power is discretionary (“may”), no limitation period applies, and Section 57(4) lets the High Court act “of its own motion.” The purity of the register is a public interest, not merely an inter-party concern.

One procedural rule also matters. Order XIV Rule 2(1) of the Code of Civil Procedure requires a court to pronounce on all issues, even where a case may be disposed of on a preliminary one. That rule applies to rectification petitions to the extent the CPC governs them in the High Court.

Critical analysis

1. The clock started before there was a registered mark

Section 33 counts acquiescence “in the use of a registered trade mark.” The respondent applied only on 28 July 2006, and from 2002 until registration on 16 July 2008 its mark was unregistered. The petitioner's remedies then were passing off and, later, opposition — not invalidation. Section 33 could not run during that period.

Even reading Section 23(1), which dates registration back to the application, the earliest possible start is 28 July 2006. A stricter view, adopted in Europe, requires awareness of the registration itself. The judgment records neither the date of entry on the register nor when the petitioner learned of it. The result might still stand — the July 2008 registration leaves well over five years before 2017 — but that was a finding the Court had to make, and did not.

2. Good faith is a condition of the bar, not a separate issue

The proviso lifts the bar if the later registration “was not applied in good faith.” No court can therefore apply Section 33 without first deciding good faith. Here the Court framed bad-faith adoption as Issues (ii) and (iii), then declined to decide them once it found acquiescence. That reverses the statutory order.

There is a paradox, too. The 2002 notice that proves the petitioner's knowledge also proves the respondent's. On the Court's own finding, the respondent filed its 2006 application after being told the petitioner objected. That does not establish bad faith — the initials explanation may be true — but it is precisely the evidence the proviso requires a court to weigh.

3. A notice of objection is the opposite of acquiescence

The Supreme Court has defined acquiescence in trade mark law specifically. In Power Control Appliances v. Sumeet Machines, (1994) 2 SCC 448, it is “sitting by” while another invests — a course of conduct implying positive acts, “not merely silence or inaction such as is involved in laches.” Ramdev Food Products v. Arvindbhai Rambhai Patel, (2006) 8 SCC 726, reaffirms this. The respondents cited both. The Court instead applied N. Murugesan, a service-law case, and its test of “tacit or passive acceptance.”

The difference is decisive here. A cease-and-desist notice is a protest; silence after it is at most delay or laches, not consent.

There is a fair counter-argument. Where an owner enforces the statutory right that registration gives it (infringement), delay does not extinguish that right; it affects only interim relief or the account of profits (Midas Hygiene Industries v. Sudhir Bhatia, (2004) 3 SCC 90; Hindustan Pencils v. India Stationery Products, AIR 1990 Del 19). Only strict acquiescence in the Power Control sense defeats the claim. In rectification, however, the court is asked to exercise a discretionary power to correct the register, so delay can properly count against the petitioner (Khoday). The Midas Hygiene line therefore does not carry over directly.

Refusing relief for delay is still not a finding under Section 33, which has its own conditions. The judgment treated the two as the same thing.

4. The proof of knowledge was thin

The chain of inference is long. Ex. R2 is a 2016–17 annual report of a subsidiary, naming a law firm as legal advisor. It proves a relationship in 2016–17, not the sending of a notice in 2002. The respondent claimed to have replied to the notice but did not produce the reply, and the judgment does not say whether the notice itself was exhibited. PW1's answer that the firm's name “might be right” was evasive, and an adverse inference was open — but the burden of proving acquiescence lies on the party pleading it.

5. Grounds independent of the earlier mark survive Section 33

Section 33 bars an invalidity claim only “on the basis of that earlier trade mark.” The misclassification ground does not rest on the petitioner's mark at all. Marble and granite fall in Class 19, yet the mark was registered in Class 42 despite the Examiner's objection. If made out, that is an entry “without sufficient cause” under Section 57(2). Acquiescence by a rival cannot cure an error in the register.

The Court dismissed the whole petition without addressing this ground. Even if the petitioner were barred, Section 57(4) allowed the Court to correct the entry of its own motion — and the Registrar was a party before it.

6. Deciding one issue after a full trial

Issues were framed and evidence was led on all of them. Order XIV Rule 2(1) CPC exists for exactly this situation: if an appellate court disagrees on the preliminary point, it should be able to decide the rest without a remand. By leaving seven issues open, the judgment invites one.

7. What was left open

Three significant questions remain undecided: whether a 2023 well-known declaration can support cancellation of a 2006 registration (Issue (vi)); whether a company can invoke Section 35 for a mark built from directors' initials — RPG Enterprises v. Riju Ghoshal, 2022 (90) PTC 312 (Bom), suggests not; and how far Section 11(2) protects “RPG” against dissimilar goods. These are the questions practitioners most wanted answered.

Comparative and precedential view

Indian law has two strands, and the judgment merges them without noticing.

The equitable strand treats acquiescence as conduct amounting to consent: Power Control (1994), Ramdev (2006). Mere delay does not defeat a proprietor, least of all against dishonest adoption: Midas Hygiene (2004), Hindustan Pencils (1990), Timken Co. v. Timken Services, 2013 (55) PTC 568 (Del) (see also our note on estoppel by acquiescence). Delay is still relevant to discretion in rectification: in Khoday Distilleries v. Scotch Whisky Association, (2008) 10 SCC 723, the Supreme Court weighed long inaction against the petitioner, and the Delhi High Court in Sanjay Chadha v. Union of India (W.P.(C)-IPD 12 of 2021) confirmed that no limitation period governs rectification.

The statutory strand is Section 33. Indian courts have rarely analysed it on its own terms; its European sources have.

In Budvar, the Court of Justice — on a reference from the Court of Appeal of England and Wales — identified four prerequisites for the five-year bar: the later mark must be registered; its application must have been made in good faith; it must be used in the Member State; and the earlier proprietor must know of the registration and of use after registration. On that test, the Madras judgment's clock would have started no earlier than 2006, and good faith would have had to be decided first.

Indian courts are not bound by this ruling, but Section 33 borrows its text from these sources almost word for word, and they are the natural guide to what it means.

Practical implications

Until a Division Bench or the Supreme Court revisits it, this judgment gives later users a strong shield. Even a protest can later be used to prove knowledge.

For brand owners

• A cease-and-desist notice is not enough. If the other side does not stop, act within five years of its registration — preferably at the opposition stage.
• Watch and oppose. Run watch services on the Trade Marks Journal and oppose at advertisement. An unopposed application is easy to recast as acquiescence.
• Keep a dated file of every notice, reply and follow-up. The petitioner here lost partly because it could neither confirm nor deny its own 2002 correspondence.
• Prepare witnesses on the history of enforcement. An evasive answer in cross-examination supplied the missing link in this case.
• Plead independent grounds separately — misclassification, non-use under Section 47, absolute grounds under Section 9. Section 33 cannot bar them.
• Plead bad faith specifically, prove it, and ask the court to decide it first. It is the statutory answer to Section 33.

For later users defending a registration

• Prove the date of registration and the earlier proprietor's knowledge after that date, not just knowledge of use.
• Build a record of honest adoption — Section 33 protects only good-faith registrants.
• Produce the correspondence you rely on. The respondent here never produced its reply to the 2002 notice.

For an appeal

If the petitioner appeals, a Division Bench is likely to test four points: When did the five-year period begin? Was good faith decided? Does Section 33 reach the classification ground? And should all issues have been decided after a full trial?

Conclusion

RPG Enterprises v. RPG Marble reaches a result many will think fair: a proprietor that objects in 2002 and then waits fifteen years has little claim on the court's discretion. But Section 33 is not a discretionary doctrine. It is a statutory bar with defined conditions — a registered later mark, five years of awareness of its use, and an application made in good faith — and it is limited to claims based on the earlier mark.

By applying a general service-law definition of acquiescence and leaving the good-faith and classification issues undecided, the Court produced a judgment that is hard to rely on as precedent. Its lesson for brand owners is clear: a protest that is not followed through can later be used as proof of acquiescence. The larger question — what Section 33 actually requires — still awaits a careful answer.