Sanchayita Lahkar

The High Court of Delhi Single Bench of Justice Saurabh Banerjee allowed an appeal challenging the refusal of a trademark registration by the Trade Marks Registry and remanded the matter for fresh adjudication. The Court held that mere filing of an opposition without supporting evidence is not sufficient to reject a trademark application. The Court set aside the impugned order and directed the Registrar of Trade Marks to dispose of the matter on merits within six months from the date of receipt of the judgment.

The appellant, Avient Switzerland GmbH, approached the Delhi High Court under Section 91 of the Trade Marks Act, 1999, challenging the order dated 12.02.2024 passed by the Assistant Registrar of Trade Marks. The order had refused the appellant’s application bearing no.1336157 for registration of the trademark "RENOL" in Class 2 and allowed the opposition bearing no.880655 filed by Treadfast Ventures, the respondent no.1.

Also Read: Courts Are Not As Fragile As Flowers To Wither And Wilt | Supreme Court Declines Contempt Action Over Scandalous Remarks But Warns That Hate Speech Must Be Dealt With An Iron Hand

Avient Switzerland GmbH, successor-in-interest of Clariant AG, claimed ownership of the trademark "RENOL," originally adopted in 1905 and registered in various jurisdictions including India. It was submitted that the mark has been used in India since 2001. Clariant AG had applied for registration of the mark "RENOL" on 03.02.2005, claiming a priority date of 11.08.2004 under convention application no.55376/2004. The trademark covered goods in Class 2 including colorants, colorant preparations, pigments, dyestuffs, and carrier material.

Upon examination, the Trade Marks Registry issued a report on 25.02.2005 which did not cite any conflicting registrations belonging to the respondent. The appellant filed replies, requested correction of user claims, and restricted the specification of goods. Subsequent hearings were held from 2014 to 2016. Evidence, including affidavits of Dr. Birgit Wust and Mr. Rolf Lengweller, was submitted to establish use of the mark since 2001. The application was then advertised in the Trade Marks Journal on 14.11.2016.

The respondent, Treadfast Ventures, filed opposition on 15.03.2017, citing prior registrations of the mark "REINOL" in Classes 1 and 3, and use since 1984 and 1991 respectively. The respondent alleged that the appellant’s mark was deceptively similar and likely to cause confusion. It relied on registration nos.428103, 554206, 670476, 441817, and 502188. In response, the appellant’s predecessor-in-interest filed a counter statement on 27.10.2017.

On 26.02.2018, the appellant’s attorney received a letter from the respondent stating it would not file any evidence under Rule 45 of the Trade Marks Rules, 2017, but reserved the right to adduce evidence later. The appellant submitted its evidence under Rule 46 on 25.04.2018. The matter was heard on multiple dates before the impugned order was passed on 12.02.2024, refusing the registration of "RENOL."

Appellant’s counsel, Mr. Peeyoosh Kalra, submitted that the Invoice dated 16.12.2001 issued by Clariant (India) Limited showed sale of goods under "RENOL" and proved user since 2001. He argued that the Registrar erroneously held that the appellant failed to prove user and instead recorded use since 2006. Mr. Kalra stated that "RENOL" was adopted in 1905 and used internationally and in India, with turnover figures reaching INR 1 billion by 2017.

It was contended that the opposition proceedings were summarily allowed without the respondent having filed any evidence, thereby shifting the burden incorrectly on the appellant. The respondent had not filed any document supporting the claim of use of "REINOL."

On behalf of the respondent, Mr. Anshul Goel submitted that "REINOL" was registered in Classes 1 and 3 since 1984 and 1991 respectively and the registrations were valid. He argued that registration was prima facie evidence of validity under Section 31 and, in absence of any rectification proceeding, the validity of the respondent’s marks could not be questioned. Mr. Goel alleged that "RENOL" was deceptively similar to "REINOL," and the appellant’s application was filed in bad faith.

According to Mr. Goel, the appellant initially filed the application on a "proposed to be used" basis and later amended the user claim to 26.12.2001 without sufficient proof. He submitted that trademark rights are territorial and the appellant failed to prove actual use in India. He relied on Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. and other judgments to argue that foreign use or registration does not prove Indian reputation.

The Court recorded: "non-filing of evidence by the said opponent/ respondent no.1 could prove fatal, more so, since the appellant had filed Invoice bearing no.184644 dated 16.12.2001 issued by the subsidiary of the appellant’s predecessor-in-interest i.e. Clariant (India) Limited, clearly evidencing sale of goods under the trademark ‘RENOL’…"

The Court stated: *"filing of Notice of Opposition itself cannot be/ is not thus, a sufficient ground for the Examiner for proceeding with allowing any Opposition proceedings."

It further observed: "the appellant is not a fly by night operator and was having worldwide registrations with continuous and uninterrupted usage of the trademark ‘RENOL’ since and from the year 1905 till to-date."

The Court explained: "it was incumbent upon the respondent no.1 to have led due, proper and cogent evidence to substantiate/ corroborate its averments/ pleadings made in the Notice of Opposition before the respondent no.2."

It recorded that the impugned order did not consider the evidence filed by the appellant and failed to provide any reasoned finding: "the respondent no.2 ought to have holistically dealt with all the document(s) on record before it and rendered a definitive/ reasoned finding thereon. Alas! the same is missing in the impugned order."

The Court reiterated established legal principles: "mere registration of a trademark and its presence in the Register of Trade Marks in itself is not sufficient."

The Court directed that "the opposition proceedings bearing no.880655 of the respondent no.1/ original opponent qua the trademark application bearing no.1336157 of the appellant is remanded back to the Registrar of Trade Marks for adjudication afresh by the Examiner on merits and in accordance with law with a direction to dispose of the same preferably within a period of six months from the date of receipt of the present judgment."

Also Read: Karnataka High Court Quashes Advertisement Tax On Educational Institutions | Non-Commercial Signages For Institutional Identification Not Taxable Under Section 134 | BBMP Orders Set Aside

The Court added: "Needless to say, during the said period of six months, no unnecessary adjournment be sought and/ or granted."

It further stated: "Since this Court has not expressed any opinion on the merits of the case, the Registrar of Trade Marks shall be free to proceed with the matter without being influenced by any of the observation herein above, in accordance with law."

Accordingly, the Court held: "the present appeal is allowed and the impugned order dated 12.02.2024 passed by the respondent no.2 is set aside. The appeal along with the pending application is accordingly disposed of."

A directive was issued: "A copy of this judgment be forwarded to the Registrar of Trade Marks for compliance."

Advocates Representing the Parties:

For the Petitioners: Mr. Peeyoosh Kalra, Mr. Amol Dixit, and Ms. Pragati Agrawal, Advocates
For the Respondents: Mr. Anshul Goel and Mr. Ashok Goel, Advocates for R-1

Case Title: Avient Switzerland GmbH v. Treadfast Ventures & Anr.

Neutral Citation: 2025: DHC:5104

Case Number: C.A.(COMM.IPD-TM) 44/2024

Bench: Justice Saurabh Banerjee