The Karnataka High Court has clarified a fundamental principle in trademark litigation: the burden of proving infringement rests squarely on the plaintiff, even when the defendant asserts a defence based on industry practice. This judgment reinforces the procedural fairness required under the Code of Civil Procedure and corrects a misapplication of evidentiary principles by the trial court.
Background & Facts
The Dispute
The respondent, United Breweries Ltd., filed Original Suit No. 25327/2015 seeking a perpetual injunction against the petitioner, Som Distilleries and Breweries Ltd., alleging trademark infringement. The respondent claimed that the petitioner was reusing beer bottles bearing the registered trademarks 'KINGFISHER' (Regn. No. 1629788) and the 'UB' flying horse device (Regn. No. 1466507) after the termination of their manufacturing agreement on 31.03.2013. The petitioner denied infringement, contending that reuse of beer bottles is a well-established industrial practice in India.
Key Facts
- The respondent holds registered trademarks for 'KINGFISHER' and the flying horse device
- The manufacturing agreement between the parties expired on 31.03.2013
- The petitioner began using the respondent's bottles after the agreement ended
- The respondent filed suit on 15.07.2015 seeking injunction and damages
- The petitioner filed a written statement on 12.11.2015, asserting that bottle reuse is a common trade practice
- The petitioner filed I.A. No. 1/2019 on 05.02.2019 under Order XIV Rule 5 CPC seeking additional issues
- The Trial Court dismissed the application on 05.10.2020
- The petitioner filed this writ petition under Article 227 on 20.03.2020
Procedural History
- 15.07.2015: Original Suit No. 25327/2015 filed by respondent
- 12.11.2015: Petitioner filed written statement asserting trade practice defence
- 05.02.2019: Petitioner filed I.A. No. 1/2019 under Order XIV Rule 5 CPC seeking framing of additional issues
- 05.10.2020: Trial Court dismissed I.A. No. 1/2019, holding that petitioner's written statement constituted admission
- 20.03.2020: Writ Petition No. 15333/2020 filed before Karnataka High Court
- 04.06.2026: Writ petition heard and reserved
- 09.06.2026: Judgment delivered by Justice Vijaykumar A. Patil
The Parties' Positions
The petitioner contended that the Trial Court erred in shifting the burden of proof to the defendant. It argued that the written statement merely raised a defence and did not amount to an admission of infringement. The petitioner relied on judgments from the Karnataka, Bombay, and Madras High Courts to support the principle that the plaintiff must first establish infringement.
The respondent defended the Trial Court's order, asserting that the petitioner's admission of reusing bottles constituted an acknowledgment of use, thereby shifting the burden to the defendant to justify such use under trade practice.
Relief Sought
The petitioner sought quashing of the Trial Court's order dated 05.10.2020, framing of appropriate issues under Order XIV Rule 5 CPC, and direction to proceed to the stage of defendant's evidence as the final opportunity.
The Legal Issue
The central question was whether the burden of proving trademark infringement lies with the plaintiff, even when the defendant asserts a defence based on industrial trade practice, and whether such a defence constitutes an admission requiring the defendant to prove its own case first.
Arguments Presented
For the Petitioner
The petitioner's counsel relied on Deenanath v. Chandrahas (WP No. 796/2022), Bhagirath Shankar Somani v. Rameshchandra Daulal Soni (2007 (5) Mh.L.J 508), and Bajaj Auto Limited v. TVS Motor Company Limited (2010 (6) CTC 225) to argue that the burden of proving infringement always rests with the plaintiff. It was submitted that the written statement merely raised a defence and did not admit the essential elements of infringement. The petitioner contended that the Trial Court misapplied Order XIV Rule 5 CPC by treating a legal defence as an admission.
For the Respondent
The respondent's counsel argued that the petitioner's written statement admitted using the bottles bearing the respondent's trademarks. It was submitted that once such use was admitted, the burden shifted to the petitioner to justify it under trade practice. The respondent relied on the principle that admissions in pleadings obviate the need for proof and that the Trial Court correctly directed the petitioner to lead evidence.
The Court's Analysis
The Court undertook a detailed examination of the pleadings and the procedural posture of the suit. It emphasized that the plaintiff, as the party initiating the suit, bears the primary burden of proving each element of the cause of action, including ownership of the trademark, use by the defendant, likelihood of confusion, and infringement.
"The alleged infringement by the defendant is required to be proved by the respondent-plaintiff in the suit. Though the petitioner-defendant has taken a defence that re-using of beer bottles is a trade practice, such a statement cannot be termed as a clear admission on the part of the petitioner-defendant."
The Court distinguished between an admission of fact and a legal defence. It held that acknowledging the reuse of bottles does not equate to admitting that such reuse constitutes trademark infringement. The petitioner's assertion of trade practice is a legal justification, not an admission of wrongdoing.
The Court further noted that the Trial Court had erroneously framed an issue placing the burden on the defendant to prove the effect of the plaintiff's disclaimer in the design registration. This, the Court held, was a misapplication of the burden of proof under the CPC.
The Court reviewed the principles laid down in Deenanath and Bhagirath Shankar Somani, affirming that the burden cannot be shifted prematurely. It held that the Trial Court's order violated the foundational rule that the plaintiff must establish a prima facie case before the defendant is required to respond.
The Court then proceeded to reframe the issues correctly, ensuring that the burden remained with the plaintiff for core allegations of infringement, while allowing the defendant to prove its defence as a counterclaim.
The Verdict
The writ petition was partly allowed. The impugned order dated 05.10.2020 was partly modified. The application under Order XIV Rule 5 CPC was allowed in part. The Court framed six issues, placing the burden of proving trademark infringement squarely on the plaintiff. The defendant was permitted to prove its defence of trade practice as a separate issue. No order as to costs was made.
What This Means For Similar Cases
Burden of Proof Cannot Be Shifted Prematurely
- Practitioners must ensure that plaintiffs establish ownership, use, and infringement before defendants are required to respond
- Defence pleadings asserting trade practice, fair use, or disclaimer do not constitute admissions
- Courts must not reverse the burden of proof under Order XIV Rule 5 CPC merely because a defendant raises a common industry practice
Trade Practice Is a Defence, Not an Admission
- Assertions of industry norms must be treated as affirmative defences requiring evidence, not as admissions
- Plaintiffs cannot rely on defendant's acknowledgment of physical use to shift burden; they must prove unlawful use
- In trademark suits, the plaintiff must prove likelihood of confusion, deception, or damage to goodwill
Proper Framing of Issues Is Procedurally Mandatory
- Issues must be framed to reflect the plaintiff's burden first, followed by defendant's defence
- Trial courts must avoid conflating factual acknowledgments with legal admissions
- Applications under Order XIV Rule 5 CPC must be decided with strict adherence to the sequence of proof
