Fifteen years of silence turned out to be the whole case in this trademark rectification acquiescence dispute, which a legal notice from 2002 and a petition from 2017 bracket neatly.<\/p>\n
RPG Enterprises Limited (“RPG Enterprises”) is a Mumbai-based multi-industry group that claims continuous use of the mark “RPG” since 1979. It holds registrations in Classes 5, 9, 12, 16 and 30, and the Trade Marks Registry listed “RPG” as a well-known mark in the Trade Marks Journal dated 29 May 2023, while this petition was pending. RPG Marble Pvt. Ltd. (“RPG Marble”) is a Bengaluru company dealing in marble, granite and stone. It says it coined “RPG” from the initials of its directors and has used the mark since 7 April 2000. On 28 July 2006, it applied for the device mark “RPG Marble Pvt. Ltd.” in Class 42, and the mark was registered under No. 1474334.<\/p>\n
RPG Enterprises filed a rectification petition under Section 57 of the Trade Marks Act, 1999 (“Trade Marks Act”) in 2017, which was later transferred to the Madras High Court as (T)OP(TM) No. 482 of 2023. It also sued in Bengaluru in January 2018 for an injunction, but that suit was dismissed for non-prosecution and a restoration plea remains pending. The Madras High Court framed eight issues on 26 April 2024. RPG Enterprises examined its authorised signatory and marked 18 exhibits, while RPG Marble marked three.<\/p>\n
The court noted that among the eight issues, the question of waiver, delay, laches and acquiescence under Section 33 of the Trade Marks Act could dispose of the petition on its own. The court therefore reasoned that it was apt to take up that issue first. A finding of acquiescence would make it unnecessary to compare the rival marks, test the well-known status of “RPG” or probe the classification objection, so the court sequenced its analysis accordingly.<\/p>\n
The court observed that RPG Enterprises’ witness had feigned ignorance of both the 2002 notice and the law firm that allegedly sent it. The court found that, when confronted with the subsidiary’s 2016-17 annual report, the witness conceded only that the firm’s name “might be right”, which sat uneasily with his earlier testimony. The court held that this evasive stance, read with the annual report, supported RPG Marble’s case that RPG Enterprises knew of the impugned mark in 2002. The court gave weight to the fact that RPG Enterprises had denied the notice, yet could not explain why its own group document named the same advisers.<\/p>\n
The court stated that the Supreme Court in Union of India v. N. Murugesan<\/em> ((2022) 2 SCC 25) had explained acquiescence as tacit or passive acceptance that presupposes knowledge, and that acquiescence followed by delay can ripen into laches. The court further observed that the doctrine turns on the parties’ conduct, to be assessed case by case. Applying that test to trademark rectification acquiescence, the court opined that a party with knowledge since 2002 which files a Section 57 petition only in 2017 has, by prolonged inaction, accepted the state of affairs. The court found that nearly fifteen years of passivity, with full knowledge, was the decisive circumstance.<\/p>\n The court held that the petition fell squarely within Section 33 of the Trade Marks Act, which protects a long-standing user against a proprietor who stood by with knowledge. The court noted that this conclusion answered the acquiescence issue against RPG Enterprises. The court reasoned that once trademark rectification acquiescence was made out, the other issues no longer needed detailed treatment, and it left RPG Enterprises’ well-known status, its allegation of dishonest adoption and the classification objection undecided.<\/p>\n In view of the observations and the arguments presented by both the parties, the Madras High Court held that:<\/p>\nSection 33 closes the door on rectification<\/h3>\n
Findings<\/h2>\n
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