Recently in Make My Trip (India) Private Limited vs. Make My Travel (India) Private Limited CS(COMM) 889/2018, I.As. 6896/2018 & 8837/2018, the Hon’ble Delhi High Court discussed the ‘doctrine of acquiescence” under the law on trade marks. The Plaintiff, Make My Trip (India) Private Limited, filed a suit against use of the marks MAKE MY TRAVEL and MMT, the tag line DREAMS UNLIMITED and a logo mark by the Defendant, Make My Travel (India) Private Limited. The Plaintiff alleged trade mark infringement and passing-off on the basis of its statutory and common law rights in the trade marks MAKE MY TRIP, MMT and the taglines ‘Memories Unlimited’ and ‘Hotels Unlimited’.
The Defendant alleged that there had been email exchanges and business transactions between the Plaintiff and the Defendant during the period 2011 to 2017, and the Plaintiff was aware of the use of the Defendant’s use of marks MAKE MY TRAVEL and MMT, the tag line DREAMS UNLIMITED and a logo mark. Hence, Plaintiff has acquiesced the use of these marks by the Defendant for continuous period of five years. On the basis of this, the Defendant contented that the Plaintiff is not entitled to the claimed relief.
The court cited to Hindustan Pencils Private Limited v. India Stationary Products Co. AIR 1990 Del 19, in which it was held that in order to claim the defense of acquiescence, there should be a tacit or an express assent by a plaintiff to a defendant’s use of a mark, with the plaintiff encouraging the defendant to continue such use. There should be an impression that the plaintiff does not regard the defendant’s as being violative of the plaintiff’s rights. The court also cited to Emcure Pharmaceuticals Ltd. v. Corona Remedies Pvt. Ltd. 2014 SCC Online Bom 1064, in which it was held that a mere failure to sue without a positive act of encouragement is no defense, and would not constitute acquiescence. The court was of the opinion that acquiescence is sitting by when another invades your rights and spends money in the doing of it. Acquiescence is not mere negligence or oversight. There must be an abandonment of the right to exclusivity.
Based on the above, the court observed that, based on the communication between the Defendant and booking customer care executive and/or franchisee of the Plaintiff, the positive knowledge of use of the marks above marks by the Defendant cannot be imputed to the management or any key managerial personnel of the Plaintiff. It cannot be accepted that the Plaintiff has acquiesced the use of the marks by the Defendant. The court also found that the act of booking customer care executive of the Defendant who apparently did not have knowledge of the intellectual property rights of the Plaintiff did not, through his positive acts, induce an encouragement towards the Defendant to do business under above-mentioned marks.
Thus, in a plea of the acquiescence, the burden of proof is always on a higher pedestal and a defendant shall require to dispense with it positively. In addition, a defendant must also require to show its good faith in adoption of the conflicting trade mark before it raises a defense of acquiescence.