Intellectual Property Laws confer exclusive rights to protect innovations and creativity. The burden of enforcing IP rights primarily lies on the owner of such rights. If you own intellectual property, you, as the holder, must identify possible infringements and decide upon appropriate measures accordingly.

When a matter of infringement turns into a legal suit, the party who initiates the action alleging infringement bears the burden of proving the case with evidence in support in order to succeed. The concept of burden of proof is closely allied with the Latin maxim “semper necessitas probandi incumbit ei qui agit”, which means that the necessity of proof always lies with the person who brings the charge, and the maxim “Ei qui affirmat non ei qui negat incumbit probatio”, which means that the proof lies upon him who affirms, not upon him who denies. Thus, primarily, the burden falls upon the one who is suing for infringement and not upon the one who denies it.

In legal parlance, “burden” means duty or responsibility, and “burden of proof” refers to the duty of a party to prove a disputed assertion or charge. It is the necessity which lies, first on one party and then on the other, of calling evidence to prevent judgment from going against him.

The term “burden of proof” is provided under Section 101 of the Indian Evidence Act, 1872. It states that when a person is bound to prove the existence of a fact, the burden of providing evidence for the same lies upon him. The onus probandi is the obligation to prove an assertion or allegation that one makes.

The terms “onus of proof” and “burden of proof” are often used interchangeably, but there is a distinction between the two concepts. “Onus” means a load or burden, and onus probandi means the burden of proving. In its primary sense, it refers to the duty of establishing a case. The crucial distinction is that the burden of proof lies upon the person who must prove the fact and generally does not shift. The onus of proof, however, may shift during the course of trial, depending on the evaluation of evidence. The onus rests on the party who would fail if no evidence were led by either side.

Under Trademark Law, registration of a trademark is prima facie proof of its validity, and the burden to prove invalidity lies on the defendant.

In Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories, AIR 1965 SC 980, the Hon’ble Supreme Court held: “…

In an action for infringement the Plaintiff must no doubt make out that the use of the Defendant’s mark is likely to deceive, but where the similarity between the Plaintiff’s and the Defendant’s mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the Plaintiff’s rights are violated… Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the Plaintiff would have to establish that the mark used by the Defendant so nearly resembles the Plaintiff’s registered trade mark as is likely to deceive or cause confusion in relation to goods in respect of which it is registered.”

In M/s Mahashian Di Hatti Ltd. v. Mr. Raj Niwas, CS(OS) No. 326/2009, reliance was placed on the Kaviraj case. It was contended that the plaintiff only needed to prove that the trademark adopted by the defendant substantially resembled its trademark, particularly due to the extensive use of the main features of the plaintiff’s mark. Even if the defendant proved that consumers could distinguish his products from those of the plaintiff, he could still be held liable for infringement of the registered trademark.

Once the plaintiff provides the required evidence to establish the case, the onus may shift to the defendant. The defendant is given an equal opportunity to present his case in accordance with the Trade Marks Act and the relevant Rules. In opposition proceedings, the burden lies on the opponent to establish that registration of the applicant’s trademark would cause confusion or damage to the opponent’s reputation.

In rectification proceedings, the burden of proof lies on the person seeking rectification to establish the grounds raised. Under Indian law, an aggrieved person may file for rectification if the trademark was registered without bona fide intention to use or if the trademark has not been used for a continuous period of five years and three months.

The parties must contest diligently to safeguard their marks with robust evidence and proofs that add weight to their claims. As the onus may shift during the proceedings, both sides must carefully evaluate and present their evidence. The party denying the claims must effectively rebut them to protect its rights in the trademark.

Thus, while the registered proprietor enjoys statutory presumptions under the Trade Marks Act, 1999, the effective enforcement of trademark rights ultimately depends upon timely action and the production of cogent and convincing evidence. Though the initial burden lies upon the plaintiff, the evidentiary onus may shift during the course of proceedings based on the material placed before the court. Both parties must therefore carefully evaluate, present, and substantiate their respective claims and defences. The success of a trademark infringement action ultimately rests on how effectively each party discharges the burden cast upon it under the Trade Marks Act, 1999 and the Indian Evidence Act, 1872.

• Authored by Associate of PatnTech