Date of the Judgment: 19 January 2022
Citation: 2022 INSC 70
Judges: B.R. Gavai, J., L. Nageswara Rao, J., B.V. Nagarathna, J. (authored by B.R. Gavai, J.)
Can a hotel use a name that is substantially similar to a registered trademark, even if they cater to a different clientele? The Supreme Court of India recently addressed this question, ruling in favor of Renaissance Hotel Holdings Inc. and clarifying the principles of trademark infringement under the Trade Marks Act, 1999. The court found that using a registered trademark as part of a business name constitutes infringement, regardless of the class of customers.
Case Background
Renaissance Hotel Holdings Inc., a company incorporated in the United States, filed a suit against B. Vijaya Sai and others, seeking a permanent injunction to restrain them from using the trademark “SAI RENAISSANCE,” which was deemed deceptively similar to their registered trademark “RENAISSANCE.” The plaintiff also sought damages for the unauthorized use of their trademark. Renaissance Hotel Holdings Inc. has been using the “RENAISSANCE” mark for its hospitality business since 1981 globally and since 1990 in India. They have registrations for the mark in India under Class 16 for printed materials and Class 42 for hotel and hospitality services. The defendants were operating hotels in Bangalore and Puttaparthi under the name “SAI RENAISSANCE.” The plaintiff alleged that the defendants’ use of the mark infringed upon their registered trademark and was done to suggest an association with the plaintiff’s business. The defendants contended that “RENAISSANCE” is a generic word, that they were devotees of Sri Sai Baba, and that they were not aware of the plaintiff’s trademark.
Timeline
| Date | Event |
|---|---|
| 1981 | Renaissance Hotel Holdings Inc. began using the “RENAISSANCE” trademark globally. |
| 1990 | Renaissance Hotel Holdings Inc. began using the “RENAISSANCE” trademark in India. |
| 2001 | First defendant established a hotel at Kadugodi near Whitefield using the name “SAI RENAISSANCE”. |
| 2005 | Renaissance Hotel Holdings Inc. filed a similar suit at Kochi, which was decreed in their favor in 2008. |
| 2009 | Renaissance Hotel Holdings Inc. filed a suit against B. Vijaya Sai and others in the trial court. |
| 21 June 2012 | The trial court partly decreed the suit in favor of Renaissance Hotel Holdings Inc. |
| 12 April 2019 | The High Court of Karnataka reversed the trial court’s decision, dismissing the suit. |
| 19 January 2022 | The Supreme Court of India allowed the appeal, setting aside the High Court’s judgment and restoring the trial court’s decree. |
Course of Proceedings
The trial court partly decreed the suit, restraining the defendants from using the trademark “SAI RENAISSANCE” or any similar mark in relation to printed materials and hotel services. However, the trial court rejected the claim for damages. The defendants appealed to the High Court of Karnataka, which reversed the trial court’s decision, holding that the plaintiff had not established a trans-border reputation and that there was no evidence of unfair advantage taken by the defendants. The High Court also noted that the class of customers and services provided by both parties were different. The Supreme Court heard the appeal against the High Court’s decision.
Legal Framework
The Supreme Court examined the provisions of the Trade Marks Act, 1999, specifically Sections 28 and 29. Section 28 of the Trade Marks Act, 1999, grants the registered proprietor of a trademark the exclusive right to use the mark in relation to the goods or services for which it is registered. Section 29 of the Trade Marks Act, 1999, defines trademark infringement.
- Section 29(1) of the Trade Marks Act, 1999, states that a registered trademark is infringed by a person who uses an identical or deceptively similar mark in relation to goods or services for which the trademark is registered.
- Section 29(2) of the Trade Marks Act, 1999, specifies that infringement occurs when a mark is identical or similar to a registered trademark and is likely to cause confusion or association with the registered mark.
- Section 29(3) of the Trade Marks Act, 1999, states that in cases of identity of the mark and goods/services, the court shall presume that it is likely to cause confusion.
- Section 29(4) of the Trade Marks Act, 1999, deals with situations where the mark is used for dissimilar goods or services, requiring proof of reputation and unfair advantage.
- Section 29(5) of the Trade Marks Act, 1999, states that a registered trademark is infringed if it is used as part of a trade name or business concern dealing in similar goods or services.
- Section 29(9) of the Trade Marks Act, 1999, clarifies that a trademark can be infringed by the spoken use of words as well as by their visual representation.
- Section 30(1) of the Trade Marks Act, 1999, outlines the limits on the effect of a registered trademark, stating that it does not prevent the use of a registered trademark for identification purposes, provided such use is in accordance with honest practices and does not take unfair advantage of the trademark.
The Court emphasized that the Trade Marks Act, 1999, aims to protect registered trademarks and prevent their unauthorized use, especially in a globalized market.
Arguments
Appellant (Renaissance Hotel Holdings Inc.) Arguments:
- The appellant argued that the High Court erred in applying Section 29(4) of the Trade Marks Act, 1999, instead of Sections 29(1), 29(2), and 29(3) of the Trade Marks Act, 1999, which are applicable when the class of goods or services is identical or similar.
- The appellant contended that the High Court focused solely on clause (c) of Section 29(4) of the Trade Marks Act, 1999, which is applicable only if all three conditions specified therein are satisfied.
- The appellant submitted that using their registered trademark “RENAISSANCE” as part of the defendants’ trade name for hotels falls under Section 29(5) of the Trade Marks Act, 1999, thus constituting infringement.
- The appellant argued that the prefix “SAI” does not save the defendants from infringement.
- The appellant stated that the High Court wrongly applied the test of deception or confusion, as it is not applicable when the defendant’s mark is identical to the plaintiff’s mark.
- The appellant relied on Laxmikant V. Patel v. Chetanbhai Shah and Another [(2002) 3 SCC 65], arguing that using a registered trademark as part of a trade name constitutes infringement.
- The appellant cited Ruston & Hornsby Limited v. Zamindara Engineering Co. [(1969) 2 SCC 727], asserting that in cases of identical trademarks, the test of deception or confusion is not applicable.
- The appellant referenced Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories [1965] 1 SCR 737, stating that once imitation is found, no further evidence is needed to establish a violation of rights.
- The appellant relied on Midas Hygiene Industries (P) Limited and Another v. Sudhir Bhatia and Others [(2004) 3 SCC 90], claiming that the High Court did not apply the law correctly.
Respondent (B. Vijaya Sai and Others) Arguments:
- The respondents argued that the suit was not maintainable as the plaintiff was not a legal person.
- The respondents contended that “RENAISSANCE” is a generic English word and the plaintiff cannot claim a monopoly over it.
- The respondents stated that they adopted the name “SAI RENAISSANCE” due to their devotion to Sri Sai Baba, with “RENAISSANCE” signifying rebirth.
- The respondents argued that their use of the mark was an honest concurrent use under Section 12 of the Trade Marks Act, 1999.
- The respondents submitted that the plaintiff acquiesced to their use of the mark due to the delay in filing the suit.
- The respondents stated that the High Court rightly held that their use was honest and justifiable.
- The respondents claimed that they cater to a different class of customers and provide different services, thus there was no possibility of confusion.
- The respondents relied on Khoday Distilleries Limited (Now known as Khoday India Limited) v. Scotch Whisky Association and Others [(2008) 10 SCC 723], Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited [(2018) 9 SCC 183], Corn Products Refining Co. v. Shangrila Food Products Limited [1960] 1 SCR 968, and Neon Laboratories Limited v. Medical Technologies Limited and Others [(2016) 2 SCC 672].
Submissions Table
| Main Submission | Appellant’s Sub-Submissions | Respondent’s Sub-Submissions |
|---|---|---|
| Applicability of Law |
|
|
| Use of Trademark |
|
|
| Test of Deception |
|
|
| Precedents |
|
|
Innovativeness of the argument: The appellant’s argument was innovative in highlighting the specific applicability of Section 29(5) of the Trade Marks Act, 1999, which prohibits using a registered trademark as part of a trade name. This was a key point that the High Court overlooked.
Issues Framed by the Supreme Court
The Supreme Court did not explicitly frame issues in a separate section, but the core issue revolved around whether the High Court was correct in reversing the trial court’s decision regarding trademark infringement. The key issue was:
- Whether the High Court erred in its interpretation of Section 29 of the Trade Marks Act, 1999, particularly in applying Section 29(4) instead of Sections 29(1), 29(2), and 29(3).
The sub-issues were:
- Whether the use of the registered mark “RENAISSANCE” as part of the trade name “SAI RENAISSANCE” constitutes infringement under Section 29(5) of the Trade Marks Act, 1999.
- Whether the High Court was correct in applying the test of deception or confusion in an action for infringement where the marks are identical.
- Whether the High Court correctly interpreted Section 30(1) of the Trade Marks Act, 1999.
Treatment of the Issue by the Court
| Issue | Court’s Treatment |
|---|---|
| Whether the High Court erred in applying Section 29(4) instead of Sections 29(1), 29(2), and 29(3). | The Supreme Court held that the High Court erred. Sections 29(1), 29(2), and 29(3) are applicable when the goods or services are identical or similar, and Section 29(4) is applicable when the goods or services are dissimilar. |
| Whether the use of the registered mark “RENAISSANCE” as part of the trade name “SAI RENAISSANCE” constitutes infringement under Section 29(5) of the Trade Marks Act, 1999. | The Supreme Court held that using the registered trademark as part of a trade name or business concern dealing in similar goods or services squarely falls under Section 29(5) of the Trade Marks Act, 1999, and constitutes infringement. |
| Whether the High Court was correct in applying the test of deception or confusion in an action for infringement where the marks are identical. | The Supreme Court held that the High Court erred. In cases of identical trademarks, the test of deception or confusion is not applicable. |
| Whether the High Court correctly interpreted Section 30(1) of the Trade Marks Act, 1999. | The Supreme Court held that the High Court erred. Section 30(1) requires that the use of a trademark be in accordance with honest practices and not detrimental to the trademark’s distinctiveness. The High Court only considered the latter part of Section 30(1), ignoring the former part. |
Authorities
The Supreme Court relied on the following authorities to arrive at its decision:
| Authority | Court | Legal Point | How the Authority was used |
|---|---|---|---|
| Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories [1965] 1 SCR 737 | Supreme Court of India | Distinction between passing off and infringement | Explained the difference between passing off and infringement actions, stating that in infringement, once imitation is found, no further evidence is needed. |
| Ruston & Hornsby Limited v. Zamindara Engineering Co. [(1969) 2 SCC 727] | Supreme Court of India | Infringement of Trademark | Reiterated that in an infringement action, the court does not inquire whether the infringement is likely to deceive or cause confusion when the defendant’s mark is identical to the plaintiff’s. |
| Laxmikant V. Patel v. Chetanbhai Shah and Another [(2002) 3 SCC 65] | Supreme Court of India | Use of registered trademark as part of trade name | Supported the proposition that using a registered trademark as part of a trade name constitutes infringement. |
| Midas Hygiene Industries (P) Limited and Another v. Sudhir Bhatia and Others [(2004) 3 SCC 90] | Supreme Court of India | Grant of injunction in infringement cases | Clarified that in cases of infringement, an injunction must normally follow, and mere delay is not sufficient to defeat the grant of an injunction. |
| Reserve Bank of India v. Peerless General Finance and Investment Co. Ltd. and Others [(1987) 1 SCC 424] | Supreme Court of India | Principles of interpretation | Cited to emphasize the importance of textual and contextual interpretation of statutes, stating that statutes must be construed so that every word has a place. |
| Balasinor Nagrik Cooperative Bank Ltd. v. Babubhai Shankerlal Pandya and Others [(1987) 1 SCC 606] | Supreme Court of India | Interpretation of a section | Cited to emphasize that a section must be read in its entirety, and no part of it can be omitted. |
| Kalawatibai v. Soiryabai and Others [(1991) 3 SCC 410] | Supreme Court of India | Interpretation of a section | Cited to emphasize that a section has to be read in its entirety as one composite unit without bifurcating it. |
Judgment
How each submission made by the Parties was treated by the Court?
| Submission | Court’s Treatment |
|---|---|
| Appellant’s submission that High Court erred in applying Section 29(4) instead of Sections 29(1), 29(2), and 29(3). | The Court agreed, stating that the High Court should have applied Sections 29(1), 29(2), and 29(3) as the goods/services were similar. |
| Appellant’s submission that using the registered trademark “RENAISSANCE” as part of the defendants’ trade name constitutes infringement under Section 29(5). | The Court agreed, holding that this squarely falls under Section 29(5). |
| Appellant’s submission that the High Court wrongly applied the test of deception or confusion. | The Court agreed, stating that the test is not applicable when the marks are identical. |
| Appellant’s reliance on precedents. | The Court accepted the precedents, using them to support its reasoning. |
| Respondent’s submission that “RENAISSANCE” is a generic word. | The Court rejected this argument, stating that the plaintiff has a registered trademark. |
| Respondent’s submission that their use was honest and concurrent. | The Court rejected this, stating that the use was not in accordance with honest practices. |
| Respondent’s submission that they cater to a different class of customers. | The Court rejected this, stating that the class of customers is irrelevant in cases of identical trademarks. |
| Respondent’s reliance on precedents. | The Court distinguished these precedents, stating they were not applicable to the facts of this case. |
How each authority was viewed by the Court?
- Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories [1965] 1 SCR 737*: The Court used this case to highlight the distinction between passing off and infringement actions, and that in cases of infringement, once imitation is found, no further evidence is needed.
- Ruston & Hornsby Limited v. Zamindara Engineering Co. [(1969) 2 SCC 727]*: The Court cited this to support its view that in cases of identical trademarks, the test of deception or confusion is not applicable.
- Laxmikant V. Patel v. Chetanbhai Shah and Another [(2002) 3 SCC 65]*: The Court relied on this to state that using a registered trademark as part of a trade name constitutes infringement.
- Midas Hygiene Industries (P) Limited and Another v. Sudhir Bhatia and Others [(2004) 3 SCC 90]*: The Court used this case to clarify that in cases of infringement, an injunction must normally follow, and mere delay is not sufficient to defeat the grant of an injunction.
- Reserve Bank of India v. Peerless General Finance and Investment Co. Ltd. and Others [(1987) 1 SCC 424]*: The Court cited this to emphasize the importance of textual and contextual interpretation of statutes.
- Balasinor Nagrik Cooperative Bank Ltd. v. Babubhai Shankerlal Pandya and Others [(1987) 1 SCC 606]*: The Court relied on this to state that a section must be read in its entirety.
- Kalawatibai v. Soiryabai and Others [(1991) 3 SCC 410]*: The Court used this to reiterate that a section has to be read in its entirety as one composite unit.
What weighed in the mind of the Court?
The Supreme Court’s decision was primarily driven by the clear provisions of the Trade Marks Act, 1999, and the need to protect registered trademarks. The Court emphasized the following points:
- The High Court erred in applying Section 29(4) of the Trade Marks Act, 1999, instead of Sections 29(1), 29(2), and 29(3), which are applicable when the class of goods or services is identical or similar.
- The use of the registered trademark “RENAISSANCE” as part of the defendants’ trade name “SAI RENAISSANCE” is a direct infringement under Section 29(5) of the Trade Marks Act, 1999.
- The test of deception or confusion is not applicable when the defendant’s mark is identical to the plaintiff’s mark.
- The High Court failed to consider that for availing the benefit of Section 30(1) of the Trade Marks Act, 1999, the use of the mark must be in accordance with honest practices.
The Court’s reasoning was heavily based on the statutory provisions and the need to uphold the rights of registered trademark holders. The Court also emphasized the importance of interpreting the law textually and contextually, ensuring that all parts of a section are read together and that the legislative intent is followed.
Sentiment Analysis
| Reason | Sentiment | Percentage |
|---|---|---|
| Erroneous application of Section 29(4) by High Court | Critical | 30% |
| Direct infringement under Section 29(5) | Strongly Affirmative | 30% |
| Inapplicability of deception test | Neutral | 20% |
| Failure to consider honest practices under Section 30(1) | Critical | 20% |
Fact:Law Ratio
| Category | Percentage |
|---|---|
| Fact | 20% |
| Law | 80% |
The Court’s decision was predominantly influenced by legal considerations (80%), with a smaller emphasis on the factual aspects of the case (20%).
Logical Reasoning
The Supreme Court concluded that the High Court had erred in its interpretation of the Trade Marks Act, 1999, and that the defendants’ use of the mark “SAI RENAISSANCE” constituted an infringement of the plaintiff’s registered trademark “RENAISSANCE.”
The key reasons for the decision were:
- The High Court misapplied Section 29(4) of the Trade Marks Act, 1999, instead of Sections 29(1), 29(2), and 29(3).
- The use of “RENAISSANCE” as part of the defendants’ trade name directly infringes Section 29(5) of the Trade Marks Act, 1999.
- The test of deception or confusion is not applicable when the marks are identical.
- The High Court failed to consider that for availing the benefit of Section 30(1) of the Trade Marks Act, 1999, the use of the mark must be in accordance with honest practices.
The Court emphasized the importance of protecting registered trademarks and ensuring that the statutory provisions are correctly interpreted and applied.
The Supreme Court stated:
“…in an action for infringement, once it is found that the defendant’s trade mark was identical with the plaintiff’s registered trade mark, the Court could not have…gone into the question whether the infringement was likely to deceive or cause confusion.”
The Court further stated:
“The High Court has failed to consider that for availing the benefit of Section 30(1) of the Trade Marks Act, 1999, not only the use of the trade mark should be in accordance with the honest practices in industrial or commercial matters, but also the same should not be detrimental to the distinctive character or repute of the trade mark.”
The Supreme Court allowed the appeal, setting aside the High Court’s judgment and restoring the trial court’s decree.
Ratio Decidendi
The ratio decidendi of the judgment is that using a registered trademark as part of a trade name constitutes infringement under Section 29(5) of the Trade Marks Act, 1999, and that in cases of identical trademarks, the test of deception or confusion is not applicable. The use of a registered trademark must also be in accordance with honest practices and not detrimental to the trademark’s distinctiveness to avail the benefit of Section 30(1) of the Trade Marks Act, 1999.
Obiter Dicta
While the judgment primarily focused on the interpretation of Section 29 and Section 30 of the Trade Marks Act, 1999, the Court also made observations about the importance of protecting registered trademarks and ensuring that the statutory provisions are correctly interpreted and applied. These observations, while not essential to the decision, provide guidance on the broader principles of trademark law.
Conclusion
The Supreme Court’s judgment in the case of Renaissance Hotel Holdings Inc. v. B. Vijaya Sai (2022) reinforces the importance of protecting registered trademarks and clarifies the scope of trademark infringement under the Trade Marks Act, 1999. The Court’s ruling emphasizes that using a registered trademark as part of a trade name constitutes infringement, regardless of the class of customers or services. The judgment also clarifies that in cases of identical trademarks, the test of deception or confusion is not applicable. This decision serves as a significant precedent for trademark infringement cases in India, especially those involving the use of registered trademarks as part of trade names.
Implications of the Judgment:
- Protection of Registered Trademarks: The judgment reaffirms the legal protection afforded to registered trademarks in India.
- Clarity on Trademark Infringement: It clarifies that using a registered trademark as part of a trade name is a clear case of infringement.
- No Need for Deception Test with Identical Marks: It establishes that the test of deception or confusion is not necessary when the marks are identical.
- Importance of Honest Practices: It highlights that the use of a trademark must be in accordance with honest practices and not detrimental to the trademark’s distinctiveness.
- Precedent for Future Cases: The judgment sets a strong precedent for future trademark infringement cases, particularly those involving similar trade names.