In the case of Shyam Steel Industries Limited v. Shyam Sel & Power Limited & Anr, the High Court of Calcutta passed an order in an appeal filed by Shyam Steel against Shyam Sel. The Court directed Shyam Sel to restrain use of the trademark ‘Shyam’ owned by Shyam Steel. Shyam Sel informed the Court that they regularly supplied steel to Shyam Steel in the past, who had never objected to the use of the trademark ‘Shyam’. Shyam Sel also said that Shyam Steel had thus ‘acquiesced’ (allowed) the usage of the trademark.
The Court, yet restrained the Shyam Sel from using the said trademark. The Court concluded that there was enough material information which indicated that the case was in favour of Shyam Steel. This, despite the fact that they knew about the unfair use of the trademark by Shyam Sel since 2015 and yet they did not come to the Court until 2019. It was also held by the Court that only delay in taking action does not amount to ‘acquiescence’ of its use. The Court also took note of several prior decisions in reaching the said conclusion. The Court laid down that ‘acquiescence’ (allowing) of usage would only arise out of positive acts of the Appellant. and not merely by silence or inaction and that acquiescence is merely ‘one facet of delay’.
