India: Acquiescence: A Facet Of Delay

Introduction

A word trademark is inherently distinctive when it is an invented or coined word and the uniqueness of its distinctiveness can be diluted if used by others in an unauthorized manner. But the pertinent question here is that what is the time limitation to bring a passing off action against the unauthorized use of the trademark. Whether a trademark owner can be allowed to come after elapse of a considerable period of time to set the clock back. The instant case Intel Corporation v. Anil Hada and Ors. 2006 (33) PTC 553 (DEL) looks into the issue of delay in taking action against passing off.

The claim of INTEL [plaintiff] is that the mark ‘INTEL’ is an invented word having inherent distinctiveness and the same had been using it as its corporate name and as a trademark on its products since 1968 worldwide and since 1972 in India. It has earned substantive goodwill and reputation among members of the trade and public. The word ‘INTEL’ reflects their organization as the trade origin and the usage of the mark by the defendant will create confusion and deception as both of them are in the same trade channel with allied business and common consumers. It was also stated that the distinctive character of the mark would be eroded and hence diluted.

The contention of the defendant is that the word is an abbreviation derived from the word "INTernational" and "ELectronics", and it is also commonly used for various activities related to international electronics like "Intel post" and a satellite organisation "INTEL SAT", therefore there cannot be any monopoly or right over the impugned word. It was also stated that the plaintiff in spite of being aware of the existence of the defendant never complained and now when they have, after spending considerable amount of money in publicity, acquired a reputation of their own, the plaintiff wants to stifle the existence of the defendant.

The Court while dismissing the application held that the defendants are justified prima facie as to how they have coined the word INTEL to be used as part of their corporate name and therefore it cannot be said that the adoption of the word was deceptive and surreptitious to cheat the plaintiff. Also there is no prima facie evidence to show dishonest adoption as the presence of the plaintiff was in the embryonic stage when the word INTEL was adopted as a part of the corporate name. Balancing the claims of the plaintiff and that of the defendants it was opined that the balance of convenience and irreparable injuries leans in favour of the defendants for the reason that action has been brought after 15 and 16 yrs of commencement of business respectively.

The development of trademark law has recognized trans-border reputation and the right to protect the mark against dilution. It is also well recognized that delay in bringing an action where there is a dishonest adoption of a mark is of no consequence but if a plaintiff stands by and knowingly lets another person to build up the trade until it becomes necessary to crush it, the plaintiff would be estopped by acquiescence. Acquiescence is nothing but one facet of delay. It implies positive act by knowingly sitting idle.

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