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
Court: High Court of Delhi
Judge: Hon’ble Mr. Justice Saurabh Banerjee
Case Overview
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 Issues
- 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.
- 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: Cited by the respondent to argue that registration confers presumptive validity. The appellant argued that proprietorship requires actual use.
- Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 SCC OnLine SC 11: Asserted by the appellant that registration alone doesn’t establish use or goodwill.
- Gupta Enterprises v. Gupta Enterprises & Anr., AIR 1998 Delhi 232: Used to argue that the burden of proof lies on the opponent in opposition proceedings.
- Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., MANU/SC/1619/2017: Respondent claimed foreign use doesn’t imply Indian goodwill. Court found it inapplicable since respondent also didn’t prove Indian use.
- Vishnudas Trading v. Vazir Sultan Tobacco Co., (1997) 4 SCC 201: Trademark rights are not perpetual and can be challenged based on non-use.
- Patel Field Marshal Agencies v. P.M. Diesels Ltd., MANU/SC/1509/2017: Reiterated that registration has rebuttable presumption of validity.
Reasoning and Analysis
The Court found that the Assistant Registrar failed to consider key evidence, including the invoice dated December 16, 2001. The respondent did not file any supporting documents under Rule 45. The Court held that while registration provides prima facie validity, the burden of proof lies with the opponent, who failed to discharge it.
The Court emphasized that allied and cognate classes do not automatically lead to confusion. Actual evidence of confusion or reputation is necessary. The Assistant Registrar’s order lacked proper reasoning and factual analysis and was thus unsustainable.
It was further clarified that a valid registration must be accompanied by active use and proof of reputation to succeed in opposition proceedings 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 in accordance with law and on merits. The Registrar was directed to conclude the matter within six months. The Court did not express any opinion on the merits, leaving that to the Registrar.
Law Settled in This Case
- Mere registration does not grant an absolute right to oppose another mark without proof of use and reputation.
- The burden of proof in opposition lies first with the opponent.
- The Registrar must holistically evaluate all evidence and not rely solely on pleadings.
- Foreign use and international registration do not establish user rights in India.
- Similarity in allied and cognate classes does not automatically result in refusal; actual confusion must be demonstrated with evidence.
