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 (Madras High Court vide judgement dated September 28, 2026 dismissed a petition to remove "RPG MARBLE PVT. LTD." (device), Registration No. 1474334 dated 28.07.2006 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 "RPG" was coined from the initials of its directors: Rajkumar Ladha, Pawan Kumar Gupta and Giriraj Ladha.

 

Date	Event
1979	Petitioner claims first use of "RPG"
08.04.1999	Petitioner's earliest application (No. 850255, Class 12), filed on a proposed-to-be-used basis
07.04.2000	Respondent claims adoption of "RPG Marble Pvt. Ltd."
13.02.2002	Legal notice allegedly sent by the petitioner's then solicitors; the petitioner denies sending it
28.07.2006	Respondent applies for Reg. No. 1474334 in Class 42, although marble and granite fall in Class 19; the Examiner had objected on classification
01.01.2008	Respondent’s mark was advertised in TM Journal no. 1383
16.07.2008	Respondent’s mark was registered under certificate no. 731819
2017	Petitioner says it first learned of the respondent; sends notice and files for rectification
30.01.2018	Petitioner sues in Bengaluru (O.S. No. 805 of 2018); suit later dismissed for non-prosecution, restoration pending
29.05.2023	"RPG" entered in the list of well-known marks (Trade Marks Journal No. 2106)
2023	Petition renumbered (T)OP(TM) No. 482 of 2023 on transfer to the High Court
26.04.2024	Eight issues framed
28.09.2026	Petition dismissed on Issue (v) alone; no costs

Issues and the Court's reasoning

The Court framed eight issues on 26 April 2024 and decided only one. The others asked whether:

1.     Whether the respondent no. 2’s registration was liable to be removed under Section 57?

2.     Whether the respondent adopted the mark fraudulently and dishonestly?

3.     Whether the Petitioners 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 the provisions of Section 57 of the Trade Marks Act, 1999?

5.     Whether the petition was barred by waiver, delay, laches and acquiescence?

6.     Whether the Well-Known status of the petitioner's Trade mark has retrospective effect on the Respondent No.2's trade mark?

7.     Whether the petitioner is entitled to the reliefs as sought in petition?

8.     Whether the petitioner is entitled to any other reliefs?

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.

Element of Section 33(1)	What it requires	What the judgment found
Earlier trade mark	The petitioner owns a mark earlier than the impugned one	Assumed, not examined
Use of a registered trade mark	The clock runs only while the later mark is on the register	Not addressed; the clock was started in 2002, four years before the application
Awareness of that use	Knowledge of use of the mark as registered	Inferred from a 2002 notice and a 2016–17 annual report
Acquiescence, continuous for five years	Acceptance sustained over five unbroken years	Fifteen years of "inaction"
Later mark applied for in good faith	Bar falls away if the application was in bad faith	Framed as Issues (ii) and (iii); left undecided
Bar operates "on the basis of that earlier trade mark"	Grounds independent of the earlier mark are untouched	Entire petition dismissed, including the classification ground

 

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. From 2002 to 2008 (16.07.2008) 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 16, 2008 registration date 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". So, no court can 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 the owner is enforcing a statutory right (i.e. infringement) that registration gives it, delay doesn't extinguish that right; it only affects interim relief or the account of profits (Midas Hygiene Industries v. Sudhir Bhatia, (2004) 3 SCC 90, and Hindustan Pencils v. India Stationery Products, AIR 1990 Del 19). Only strict acquiescence in the Power Control sense defeats the claim. But under rectification, the court is asked to use a discretionary power to correct the register, so delay can properly count against the petitioner (Khoday). The Midas Hygiene line therefore doesn't 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. 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. 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. One is whether a 2023 well-known declaration can support cancellation of a 2006 registration (Issue (vi)). Another is 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. The third is 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). 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.

Jurisdiction	Provision	When the five years start	Good-faith carve-out
India	Section 33, Trade Marks Act 1999	Unsettled; this judgment counted from knowledge of unregistered use in 2002	Yes, but not applied here
United Kingdom	Section 48, Trade Marks Act 1994	From awareness of use after registration, following Budvar	Yes
European Union	Art. 9, Directive 2015/2436; Art. 61, Regulation 2017/1001	From awareness of the registration and of use after registration (Budějovický Budvar, národní podnik v. Anheuser-Busch Inc. C-482/09, 2011)	Yes

 

In above EU case, the Court of Justice [on a reference for a preliminary ruling from the Court of Appeal (England and Wales) (Civil Division)] 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, and preferably at the opposition stage.

•        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 grounds that do not depend on your mark 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 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. 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.