Chapter IV - Effect of Registration
Section 33
Section 33: Five-year acquiescence and earlier rights
Knowing acquiescence for five continuous years can limit an earlier proprietor’s challenges to a later registered mark, subject to the good-faith exception.
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Need advice on Section 33?
This article is for general information. Refer to the Trade Marks Act, 1999 official text for the official provisions. If you need professional advice for your situation, contact Bizeneed.
Statutory text
Bare law
(1) 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 in relation to the goods or services in relation to which it has been so used, unless the registration of the later trade mark was not applied in good faith.
(2) Where sub-section (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark, or as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark may no longer be invoked against his later trade mark.
Rule and business relevance
The restriction concerns invalidity and opposition to use for the goods or services in which the later mark has been used. The later proprietor nevertheless cannot use that result to oppose the earlier mark or right under subsection (2).
Limits and related provisions
Do not equate any five-year delay with acquiescence: awareness and continuity matter. A later registration not applied for in good faith is expressly excepted.
Hypothetical business example
Hypothetical example: An earlier proprietor knows of continuous use of a later registered mark for five years and acquiesces. Both parties assess the limited mutual position rather than assuming the earlier mark disappears.
Practical decision flow
Establish the later registration and actual use.
Determine awareness and five continuous years of acquiescence.
Check good faith and the goods or services affected.
Applying the Act and current procedure
Read the statutory rule together with the applicable Trade Marks Rules, current Registry directions and the facts of the particular mark. Forms, fees and procedural requirements should be checked against their current official source before filing.
Practical checklist
Do
- Establish the later registration and actual use.
- Determine awareness and five continuous years of acquiescence.
- Check good faith and the goods or services affected.
Avoid
- Do not equate any five-year delay with acquiescence: awareness and continuity matter. A later registration not applied for in good faith is expressly excepted.
Glossary
- Acquiescence
- The knowing tolerance of use described by the provision.
- Earlier right
- The earlier mark or right whose continued use is protected in subsection (2).
Frequently asked questions
Is mere passage of five years always enough?
No. The section requires awareness and continuous acquiescence in the stated use.
Does bad faith matter?
Yes. The exception concerns a later registration not applied for in good faith.
Can the later owner then stop the earlier mark?
Subsection (2) says the later proprietor is not entitled to oppose that earlier use or right in the stated situation.
Need help applying this provision to your situation?
Contact BizeneedLast updated 10 October 2026