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Ratio Decidendi

Published: Feb 18, 2022

By Syed Peeran, Partner, Aniruddha A. S., Principal Associate, and Akshita Bohra, Senior Associate, Lakshmikumaran & Sridharan 

THE Supreme Court in a recent full bench decision [Renaissance Hotel Holdings Inc. v. B. Vijaya Sai and others , Judgement dated 19.01.2022 in Civil Appeal No. 404/2022 - 2022-TIOLCORP-01-SC-IPR-LB] had occasion to examine what constitutes infringement of trademark. While doing so, the court also explained the difference between an action for passing off and a suit for infringement of trademark.

Facts of the case

The Appellant was a company incorporated in the United States and was one of the world's largest and leading chain of hotels. The Appellant was the holder and proprietor of the trade mark and service mark "RENAISSANCE" in relation to hotel, restaurant, catering and allied services. The Appellant had been using the trade mark in India since 1990 and had the same registered under Class 16 for "printed matter, periodicals, books, stationery, manuals, magazines, instructional and teaching materials and office requisites" and under Class 42 for "hotel, restaurant, catering, bar and cocktail lounge services, provisions of facilities for meetings, conferences and exhibitions, reservation services for hotel accommodations".

The Respondent was operating hotels under the name "SAI RENAISSANCE" at Bengaluru and Puttaparthi in Andhra Pradesh. The Appellant claimed that the Respondent was copying the Appellant's trade mark suggesting an affiliation or connection with the business of the Appellant. The Appellant therefore claimed infringement of its registered trade mark "RENAISSANCE" and filed a suit before the Principal District Judge, Bengaluru seeking a permanent injunction against the Respondent from using the trade mark "SAI RENAISSANCE" amongst other reliefs.

Proceedings before the Trial Court and the High Court

The trial court partly decreed the suit holding that the Respondent had committed trademark infringement and restrained the Respondent from using the trade mark or service mark "RENAISSANCE" or any deceptively similar mark in any manner in relation to hotels, restaurant or hospitality services.

The High Court in appeal observed that the evidence produced by the Appellant did not disclose that a trans-border reputation was earned by it or that the Respondent was taking unfair advantage of its trade mark or that the use of the word "SAI RENAISSANCE" was detrimental to the distinctive character or reputation of the Appellant's trade mark. Accordingly, the High Court held that there was no infringement of the trade mark as contemplated under Sec. 29(4) and allowed the appeal by setting aside the judgement of the trial court below. Aggrieved by the same, the Appellant approached the Supreme Court.

Submissions by the parties

The Appellant contended that the High Court had erroneously relied on the test under Sec. 29(4) of the Act, specifically on the condition under clause (c) of Sec. 29(4). Further, it was submitted that the High Court had failed to consider Sec. 29(5) of the Act that considered using another's trade mark in one's trade name to be an infringement.

The Respondent principally contended that "RENAISSANCE" was a generic English word and none could claim a monopoly of the same. It was further contended that the name "SAI RENAISSANCE" was adopted to signify the birth of Sri Puttaparthi Sai Baba as a reincarnation of Sri Shirdi Sai Baba. Therefore, it was a case of honest use under Sec. 12 of the Act. Further, the Appellant had acquiesced to the Respondent's use of the mark as the suit was filed after a long lapse of time.

Decision and findings

The Supreme Court after considering the rival contentions allowed the appeal and restored the judgement of the trial court by arriving at the following findings:

(i) Sec. 29(2) of the Act provides for three situations (in its three sub-clauses (a), (b) and (c)) in which a trade mark can be said to be infringed:

(a) Identity with the registered trade mark and similarity with the goods/services covered by such mark;

(b) Similarity with the registered trade mark and identity/similarity with the goods/services covered by such mark;

(c) Identity with the registered trade mark and identity with the goods/services covered by such mark;

It is sufficient if any of the above three conditions is satisfied so as to constitute trademark infringement. This is indicated by the words 'or' appearing after each sub-clause.

(ii) In the present case, both the trial court and the High Court had come to the conclusion that the trade mark of the Respondent is identical with that of the Appellant and services rendered by the Respondent are under the same class, i.e. Class 16 and Class 42 in respect of which the Appellant's trade mark was registered.

(iii) When there was identity of the registered trade mark and the identity of the goods and services covered by such registered trade mark, Sec. 29(2)(c) of the Act became applicable so that the Appellant's registered trade mark could be said to be infringed. In such a situation, there was a legal presumption as provided under Sec. 29(3) that the same is likely to cause confusion on the part of the public.

(iv) The High Court erred in relying instead on Sec. 29(4)(c) which deals with cases of infringement where the infringing mark is used in relation to services which are not similar to the one for which the trade mark is registered. It is only in such cases that all the requirements of Sec. 29(4) contained in sub-clauses (a), (b) and (c) have to be satisfied before an infringement can be said to be committed. This cumulative requirement is indicated by the words 'and' appearing after each sub-clause.

(v) In the present case, there was no dispute that the Respondent's goods and services were similar to that of the Appellant (being in the hotel and hospitality industry). Therefore, there was no occasion for the High Court to rely on Sec. 29(4) of the Act. Accordingly, the High Court's reliance on the ingredients of Sec. 29(4) as contained in its sub-clauses - reputation in India, taking unfair advantage, distinctive character or repute of the registered trade mark - was misplaced. The High Court fell in error in failing to appreciate the context in which the relevant provisions occurred.

(vi) The High Court's finding that there was no material to establish any confusion in the minds of consumers was also misplaced. This was because the legal presumption under Sec. 29(3) was applicable once an infringement under Sec. 29(2)(c) was established. Further, an action for infringement under the Act is distinct from an action for passing off. In the former, an injunction follows once the defendant improperly uses the plaintiff's mark. Unlike the latter, there is no requirement to prove actual deception or actual damage. To explain this difference, the Court relied on the Supreme Court decisions in Kaviraj Pandit Durga ¹ and Ruston & Hornsby Limited ².

(vii) The High Court also erred in relying on Sec. 30(1)(b) which provides for the use of a registered trade mark for the purposes of identifying the goods or services as those of the proprietor provided the twin requirements under sub-clauses (a) and (b) are fulfilled. The High Court erroneously relied on sub-clause (b) - no unfair advantage / detrimental to distinctive character or repute of trade mark - while ignoring sub-clause (b) - such use is in accordance with honest practices in industrial or commercial matters.

(viii) Even otherwise, the Respondent's use of "SAI RENAISSANCE" constituted infringement under Sec. 29(5) as the same was part of the trade name of the Respondents. Further, since the words "SAI RENAISSANCE" and "RENAISSANCE" were phonetically and visually similar, it also constituted infringement under Sec. 29(9) of the Act.

[The views expressed are strictly personal.]

¹Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, (1965) 1 SCR 737.

² Ruston & Hornsby Limited v. Zamindara Engineering Co., (1969) 2 SCC 727.