In an action for infringement of trademark statutory right of the plaintiff for an injunction cannot be lost merely on the question of principles of delay. The courts have stated time and again that mere delay in bringing an action is not sufficient to defeat grant of injunction in cases of infringement of trademark. Courts have further gone to say that even if there may be a bonafide inordinate delay on the part of the plaintiff in bringing a suit for injunction, the application of the plaintiff for an interim injunction cannot be dismissed on the ground that the defendant has been using the mark for a number of years. However, if the plaintiff knowingly stands by and lets the defendant build up their business or venture, then in that case the plaintiff would be stopped by their acquiescence from claiming equitable relief in the form of interim injunction and may even prejudice its chances of obtaining a permanent injunction.
The difference between delay and acquiescence has been aptly explained in the case of Hindustan Pencils (P) Ltd. vs. India Stationery Products Co. and Anr. (decided on 23.1.1989), wherein the Delhi High Court held that delay and acquiescence are two different concepts. While delay would be mere passage of time, acquiescence occurs when the proprietor of the trademark in full knowledge of his rights and knowing that the infringer is ignorant of them, does something to encourage the infringer's misapprehension, with the result that the infringer acts upon his mistaken belief and worsens his position. The court observed that if the defendant is an honest user, then delay on the part of the plaintiff coupled with prejudice caused to the defendant, if shown, would amount to laches and would be a valid defense. However, in cases where the defendant was dishonestly using/adopting the mark, even if there was inordinate delay on part of the plaintiff in bringing the suit, the relief of injunction will not be denied. The court in the said case granted interim injunction to the plaintiff even though the plaintiff was delayed by 6 years in bringing the suit.
In a recent judgment, the Bombay High Court in the matter Essel Propack Ltd. v. Essel Kitchenware Ltd. and Ors. (decided on 11.03.2016), went a step further and held that even silent assent to the defendant for a number of years on the part of the plaintiff amounts to acquiescence of its claim to seeking injunction. The Hon’ble court said that ‘acquiescence means assent to an infringement of rights, either express or implied from conduct, by which the right to equitable relief is normally lost. It takes place when a person, with full knowledge of his own rights and of any acts which infringe them, has either at the time of infringement or after infringement, by his conduct led the persons responsible for the infringement to believe that he has waived or abandoned his rights. It literally means silent assent’.
In the matter of M/s. Power Control Appliances & Ors. v. Sumeet Machines Pvt. Ltd. [(1994) 2 SCC 448] the Supreme Court held that, ‘Acquiescence is sitting by when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches. If the acquiescence in the infringement amounts to consent, it will be a complete defence’.