Burden of Proof in Trademark Opposition
Introduction: This case involves a trademark dispute between Avient Switzerland GMBH, a global chemical manufacturer, and Treadfast Ventures, concerning the registration of the mark ‘RENOL’ in Class 2. The primary issue was whether the appellant had established prior use and proprietorship over the mark ‘RENOL’ in India, in the face of opposition by the respondent who owns the registered trademark ‘REINOL’ in Classes 1 and 3. The High Court of Delhi was called upon to assess the legality and sustainability of the order passed by the Assistant Registrar of Trade Marks rejecting the appellant’s application for the mark ‘RENOL’.
Factual Background: The trademark ‘RENOL’ was originally adopted by Clariant AG, the predecessor-in-interest of the appellant, Avient Switzerland GMBH, as far back as 1905 in Germany. The appellant claimed international use of the mark and specifically asserted use in India since December 26, 2001. An application for registration in India under Application No. 1336157 in Class 2 was filed on February 3, 2005, with a priority claim from August 11, 2004. The specification was later narrowed to colorants for resins.
In contrast, the respondent Treadfast Ventures owned the trademark ‘REINOL’, with registrations in Classes 1 and 3, dating back to 1984 and 1991. These marks were claimed to be used in India since those respective years. The respondent filed an opposition to the appellant’s application based on similarity and likelihood of confusion.
Procedural Background: The Trade Marks Registry issued an Examination Report in 2005, which did not cite the respondent’s mark as a conflicting registration. The appellant filed responses and amended the user claim to reflect use since December 2001. The mark was advertised in the Trade Marks Journal in 2016.
The respondent filed a Notice of Opposition in 2017 but later chose not to submit any evidence under Rule 45 of the Trade Marks Rules, 2017. In contrast, the appellant submitted evidence of use, including invoices dated December 16, 2001. Hearings were conducted across 2019, 2022, and 2023. On February 12, 2024, the Assistant Registrar passed the impugned order allowing the opposition and rejecting the appellant’s application, leading to the present appeal under Section 91 of the Trade Marks Act, 1999 before the Delhi High Court.
Legal Issue: The primary issues before the High Court were whether the Assistant Registrar erred in allowing the opposition and rejecting the application without proper consideration of evidence; whether the respondent’s mere registration of a similar trademark, without evidence of use, could justify refusal of the appellant’s application; and whether the marks ‘RENOL’ and ‘REINOL’ were deceptively similar in law to warrant rejection of the appellant’s mark under Section 11 of the Trade Marks Act, 1999.
Discussion on Judgments: Century Traders v. Roshan Lal Duggar & Co., FAO (OS) 46/1976, was cited by the respondent to argue that registration confers presumptive validity. The appellant countered that this case emphasizes that to claim proprietorship, a party must prove actual use, which the respondent failed to do.
Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 SCC OnLine SC 11, was invoked by the appellant to assert that mere presence of a mark on the register does not equate to proof of use or goodwill. The Supreme Court emphasized that assertions of prior rights must be backed by evidence.
Gupta Enterprises v. Gupta Enterprises & Anr., AIR 1998 Delhi 232, was relied upon by the appellant and reaffirmed by the Court to support the proposition that the burden of proof in opposition proceedings rests first on the opponent to prove use, registration, and reputation of their mark.
Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., MANU/SC/1619/2017, was relied on by the respondent to argue that foreign registration and use do not establish goodwill or reputation in India. The Court recognized this principle but held it did not aid the respondent’s case, as they too failed to establish use in India.
Vishnudas Trading v. Vazir Sultan Tobacco Co., (1997) 4 SCC 201, was cited to emphasize that trademark rights are not absolute or perpetual and can be challenged based on non-use or lack of genuine use, even if registered.
Patel Field Marshal Agencies v. P.M. Diesels Ltd., MANU/SC/1509/2017, was relied on by the respondent for the principle that registered trademarks enjoy presumptive validity. However, the High Court noted this presumption is rebuttable and must be tested through evidence.
Reasoning and Analysis of the Judge: The Court carefully analyzed the materials on record and found that the Assistant Registrar had failed to appreciate key aspects. Specifically, the Assistant Registrar did not consider the invoice dated December 16, 2001, evidencing the appellant’s use of the mark ‘RENOL’ in India. The respondent, on the other hand, did not file any evidence under Rule 45 to support the opposition.
The Court emphasized that while registration is prima facie evidence of validity, the burden of proof in opposition proceedings lies first with the opponent. The respondent failed to discharge this burden by not submitting even a single document to support its claim of use. The Assistant Registrar’s reliance on bare assertions in the Notice of Opposition was found legally untenable.
Furthermore, the Court rejected the assumption that marks in allied and cognate classes automatically lead to confusion. It reiterated that evidence of actual market confusion or reputation must be led. It also found the Assistant Registrar’s order lacking in reasoning and factual analysis.
The Court held that ignoring the appellant’s evidence and uncritically accepting the respondent’s unsupported claims rendered the impugned order unsustainable. It clarified that even a valid registration must be supported by active use and proof of reputation to sustain an opposition under Section 11.
Final Decision: The Delhi High Court allowed the appeal. The impugned order dated February 12, 2024, was set aside. The matter was remanded to the Registrar of Trade Marks for a fresh adjudication of the opposition proceeding in accordance with law and on merits. The Registrar was directed to conclude the matter within six months. The Court explicitly stated that it had not expressed any view on the merits, leaving the Registrar to decide afresh.
Law Settled in This Case: This case reaffirms critical principles of trademark law. Mere registration does not confer an absolute right to oppose another mark unless substantiated by proof of use and reputation. The burden of proof in opposition proceedings lies first with the opponent, who must lead cogent evidence. The Registrar must evaluate all evidence holistically, and not rely solely on pleadings or assertions. Foreign use and international registration do not by themselves establish user rights in India. The presence of similar marks in allied and cognate classes does not automatically warrant refusal; the test is actual likelihood of confusion, based on evidence.
Case Title: Avient Switzerland GMBH Vs. Treadfast Ventures & Anr.:Date of Order: 01 July 2025:Case Number: C.A. (COMM.IPD-TM) 44/2024:Neutral Citation: 2025:DHC:5104:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Saurabh Banerjee
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
