Priyanga .GAltacit Global

LACHES AND ACQUIESCENCE IN IPR

"Laches" is a doctrine which, like a statute of limitations, serves as a defense to legal proceedings when the plaintiff has waited too long before bringing the claim. 

It applies where there is (1) Lack of diligence by the

party against whom the defense is asserted; (2) Prejudice (i.e., harm) to the party asserting the defense.  

“Resting on Your Rights May Cost You”

- John P. Halfpenny, Esq.,

«Vigilantibus non dormientibus æquitas

subvenit »

- Equity aids the vigilant, not those who slumber on their rights

The Doctrine of Laches consists of the following

elements1. The plaintiff delayed filing suit for an unreasonable and inexcusable length of time from the time the plaintiff knew or reasonably should have known of its

claim against the defendant, and2. The delay operated to the prejudice or injury of the defendant.

STATUTE OF LIMITATIONS & DOCTRINE OF LACHES

• The law encourages a speedy resolution for every dispute.• Cases in law are governed by STATUTES OF

LIMITATIONS, which are laws that determine how long a person has to file a lawsuit before the right to sue expires. • Different types of injuries (e.g., TORT and contract) have different time periods in which to file a lawsuit. • Laches is the equitable equivalent of statutes of limitations. However, unlike statutes of limitations, laches leaves it up to the court to determine, based on the unique facts of the case, whether a plaintiff has waited too long to

seek relief.

From when does the period for laches calculated?

The period of delay for laches for a Trademark, copyright or patent infringement claim runs only from the time that the plaintiff knew or should have known about an actual or impending infringement.

Acquiescence

Acquiescence, consenting by remaining silent.

Acquiescence implies positive acts.

Burden of proof is on the defendant.

Section 30 (2) (c)- ACT 1999 Defence of Acquiescence

Section 33- Effect of Acquiescence- If you had remained acquiesced for a continuous period of five years in the use of registered trademark,

being aware of the use, the later trademark is not entitled to oppose the use of the earlier trademark or the exploitation of the earlier trademark.

Khoday India Limited vs

The Scotch Whisky Association and

others (Civil Appeal 4179 of 2008: decided on May

27, 2008)(Justice Sinha and Justice LS Panta)

The judge held that “We, therefore, in the peculiar facts and circumstances of this case, are of the opinion that action of the respondents is barred under the principles of acquiescence and/ or waiver. "

HARI PUTAR V HARRY POTTER

Enforcement strategies:

Opposing applications or registrations.

Issuing cease and desist letters .

Publishing warnings to infringers .

Identifying distributors, manufacturers & financial sources of infringement/counterfeiting.

THANK YOU