Date of the Judgment: 19 January 2022
Citation: (2022) INSC 40
Judges: L. Nageswara Rao, B.R. Gavai, and B.V. Nagarathna, JJ.
Can a company prevent another business from using a similar name, even if the second business adds a prefix? The Supreme Court of India recently addressed this question in a trademark dispute involving the well-known hotel chain, Renaissance Hotels. The core issue was whether the use of “SAI RENAISSANCE” by the defendants infringed upon the plaintiff’s registered trademark “RENAISSANCE.”
The Supreme Court bench, comprising Justices L. Nageswara Rao, B.R. Gavai, and B.V. Nagarathna, delivered the judgment, with Justice B.R. Gavai authoring the opinion.
Case Background
Renaissance Hotel Holdings Inc., the appellant, filed a suit against B. Vijaya Sai and others, the respondents, for trademark infringement. The appellant, a company incorporated in the USA, claimed to be the owner of the trademark “RENAISSANCE” for hotel and hospitality services. They had been using this mark globally since 1981 and in India since 1990. The appellant held registrations for the trademark “RENAISSANCE” in India under Class 16 for printed materials and Class 42 for hotel and restaurant services.
The appellant discovered that the respondents were operating hotels under the name “SAI RENAISSANCE” in Bangalore and Puttaparthi. The appellant contended that this use infringed upon their registered trademark and sought a permanent injunction to restrain the respondents from using the mark, along with damages.
The respondents argued that “RENAISSANCE” is a generic word and that they were using the name “SAI RENAISSANCE” due to their devotion to Sri Sai Baba. They claimed that their services and customer base were different from those of the appellant.
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 | The first respondent established a hotel at Kadugodi near Whitefield, Bangalore, under the name “SAI RENAISSANCE.” |
| 2005 | Renaissance Hotel Holdings Inc. filed a similar suit at Kochi, which was decreed in its favor on 31 January 2008. |
| 2009 | Renaissance Hotel Holdings Inc. filed a suit (O.S. No. 3 of 2009) against the respondents in the Principal District Judge, Bangalore Rural District, Bangalore. |
| 21 June 2012 | The trial court partly decreed the suit in favor of the appellant, restraining the respondents from using the “SAI RENAISSANCE” mark. |
| 12 April 2019 | The High Court of Karnataka at Bengaluru allowed the appeal filed by the respondents, setting aside the trial court’s judgment. |
| 19 January 2022 | The Supreme Court of India allowed the appeal filed by Renaissance Hotel Holdings Inc., setting aside the High Court’s judgment and restoring the trial court’s decree. |
Legal Framework
The Supreme Court considered the following sections of the Trade Marks Act, 1999:
- Section 28: This section defines the rights conferred by registration of a trademark. It grants the registered proprietor the exclusive right to use the trademark in relation to the goods or services for which it is registered.
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Section 29: This section deals with the infringement of registered trademarks. It specifies the conditions under which a registered trademark is considered to be infringed by another party.
- Section 29(1): A registered trademark is infringed by a person who, not being the registered proprietor, uses a mark identical or deceptively similar to the registered mark in relation to similar goods or services.
- Section 29(2): A registered trademark is infringed if the use of a similar mark is likely to cause confusion among the public or create an association with the registered mark due to its identity or similarity with the registered mark and the goods or services covered by it.
- Section 29(3): In cases falling under Section 29(2)(c), the court shall presume that the use of the mark is likely to cause confusion among the public.
- Section 29(4): A registered trademark is infringed if a person uses an identical or similar mark for dissimilar goods or services, provided the registered mark has a reputation in India and the use of the mark takes unfair advantage of or is detrimental to the distinctive character or repute of the registered mark.
- Section 29(5): A registered trademark is infringed if a person uses the registered trademark as their trade name or part of their trade name for similar goods or services.
- Section 29(9): If a registered trademark includes words, it can be infringed by the spoken use of those words, as well as by their visual representation.
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Section 30: This section outlines the limits on the effect of a registered trademark, specifying situations where the use of a registered trademark does not constitute infringement.
- Section 30(1): Nothing in Section 29 shall prevent the use of a registered trademark for identifying goods or services as those of the proprietor, provided the use is in accordance with honest practices and does not take unfair advantage of or is detrimental to the distinctive character or repute of the trademark.
- Section 31: This section states that the registration of a trademark is prima facie evidence of its validity.
Arguments
Appellant’s Arguments:
- The appellant argued that the respondents’ use of “SAI RENAISSANCE” infringed upon their registered trademark “RENAISSANCE” under Section 29(1), 29(2), and 29(3) of the Trade Marks Act, 1999, as the services were identical or similar.
- They contended that the High Court incorrectly applied the test under Section 29(4) of the Trade Marks Act, 1999, which is applicable only when all three conditions specified therein are satisfied.
- The appellant submitted that the respondents’ use of their registered mark as part of their trade name for hotels falls under Section 29(5) of the Trade Marks Act, 1999, making them liable for infringement.
- The prefix “SAI” does not save the respondents from an action for infringement, as the core mark “RENAISSANCE” was being used.
- The test of deception or confusion was wrongly applied by the High Court. In an action for infringement, where the respondent’s mark is identical to the appellant’s, such a test is not applicable.
- Once it is found that there is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated.
Respondents’ Arguments:
- The respondents argued that the suit was not maintainable as the appellant was not a legal person.
- They contended that “RENAISSANCE” is a generic word, and the appellant cannot claim a monopoly over it.
- The respondents submitted that they adopted the name “SAI RENAISSANCE” due to their devotion to Sri Sai Baba and that it signifies the rebirth of Sri Puttaparthi Sai Baba as a reincarnation of Sri Shirdi Sai Baba.
- They claimed that their use of the mark amounted to honest concurrent use under Section 12 of the Trade Marks Act, 1999.
- The respondents argued that the appellant acquiesced to their use of the mark as the suit was filed after a long time gap.
- The respondents submitted that the class of customers they catered to was different from that of the appellant, and therefore, there was no possibility of confusion.
Submissions Table
| Main Submission | Appellant’s Sub-Submissions | Respondents’ Sub-Submissions |
|---|---|---|
| Infringement of Trademark |
✓ The respondents’ mark is identical or deceptively similar. ✓ The services are within the same class (Class 16 and 42). ✓ The use of the mark falls under Section 29(5) of the Trade Marks Act, 1999. ✓ The prefix “SAI” does not negate infringement. |
✓ “RENAISSANCE” is a generic word. ✓ The mark was adopted due to religious beliefs. ✓ The use is an honest concurrent use under Section 12 of the Trade Marks Act, 1999. |
| Applicability of Legal Tests |
✓ The High Court wrongly applied Section 29(4) of the Trade Marks Act, 1999. ✓ The test of deception is not applicable when the mark is identical. |
✓ The High Court correctly held that the use was honest. ✓ The class of customers is different. |
| Maintainability of Suit | ✓ The appellant is the registered proprietor of the trademark. |
✓ The appellant is not a legal person. ✓ There was a delay in filing the suit. |
Issues Framed by the Supreme Court
The trial court framed the following issues:
- Whether the Plaintiff is the registered proprietor of the trade mark/service mark “RENAISSANCE” under the Trade Mark Act 1999?
- Whether the plaintiff is the proprietor of trade mark/service mark “Renaissance” on account of prior adoption and use in relation to hotels and hospitality business?
- Whether the plaintiff proves that the defendant is infringing the trade mark of the plaintiff?
- Whether the plaintiff proves that the action of defendant is one of passing off?
- Whether the plaintiff is entitled to an order for delivery of goods, labels or any other printed materials?
- Whether plaintiff is entitled for rendition of accounts and damages?
- To what reliefs and decree the parties are entitled for?
- Whether the suit is not maintainable for want of signing and verification of the plaint by person having locus standi?
- Whether the defendants prove that they have been honestly and continuously using the trade mark Hotel SAIRenaissance?
Treatment of the Issue by the Court
The following table demonstrates as to how the Court decided the issues:
| Issue | Court’s Decision | Brief Reasons |
|---|---|---|
| Whether the Plaintiff is the registered proprietor of the trade mark/service mark “RENAISSANCE” under the Trade Mark Act 1999? | Affirmative | The appellant provided evidence of their registration for the trademark “RENAISSANCE”. |
| Whether the plaintiff is the proprietor of trade mark/service mark “Renaissance” on account of prior adoption and use in relation to hotels and hospitality business? | Affirmative | The appellant had been using the trademark globally since 1981 and in India since 1990. |
| Whether the plaintiff proves that the defendant is infringing the trade mark of the plaintiff? | Affirmative | The respondents were using “SAI RENAISSANCE,” which is identical or deceptively similar to the appellant’s registered trademark, for similar services. |
| Whether the plaintiff proves that the action of defendant is one of passing off? | Negative | The court did not find sufficient evidence to prove passing off. |
| Whether the plaintiff is entitled to an order for delivery of goods, labels or any other printed materials? | Negative | The court did not grant this relief. |
| Whether plaintiff is entitled for rendition of accounts and damages? | Negative | The court did not grant damages. |
| Whether the suit is not maintainable for want of signing and verification of the plaint by person having locus standi? | Affirmative | The court found that the suit was maintainable. |
| Whether the defendants prove that they have been honestly and continuously using the trade mark Hotel SAIRenaissance? | Does not arise for consideration | The court held that the use was not honest. |
Authorities
The Supreme Court considered the following cases and legal provisions:
| Authority | Court | How Considered | Legal Point |
|---|---|---|---|
| Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories [1965] 1 SCR 737 | Supreme Court of India | Followed | Distinction between passing off and infringement actions. |
| Ruston & Hornsby Limited v. Zamindara Engineering Co. (1969) 2 SCC 727 | Supreme Court of India | Followed | In an infringement action, if the defendant’s mark is identical, the court need not inquire about the likelihood of deception. |
| Laxmikant V. Patel v. Chetanbhai Shah and Another (2002) 3 SCC 65 | Supreme Court of India | Followed | Use of 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 | Explained | Injunctions are normally granted in cases of infringement, and dishonesty in adoption of a mark is a factor. |
| Khoday Distilleries Limited (Now known as Khoday India Limited) v. Scotch Whisky Association and Others (2008) 10 SCC 723 | Supreme Court of India | Distinguished | The case was related to rectification of a trademark and not infringement. |
| Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited (2018) 9 SCC 183 | Supreme Court of India | Distinguished | The marks and products in the case were different. |
| Neon Laboratories Limited v. Medical Technologies Limited and Others (2016) 2 SCC 672 | Supreme Court of India | Distinguished | The case was related to a temporary injunction based on the “first in the market” test. |
| Corn Products Refining Co. v. Shangrila Food Products Limited [1960] 1 SCR 968 | Supreme Court of India | Distinguished | Not applicable to the present case. |
| Reserve Bank of India v. Peerless General Finance and Investment Co. Ltd. and Others (1987) 1 SCC 424 | Supreme Court of India | Followed | Interpretation must depend on the text and the context. |
| Balasinor Nagrik Cooperative Bank Ltd. v. Babubhai Shankerlal Pandya and Others (1987) 1 SCC 606 | Supreme Court of India | Followed | A section must be read in its entirety. |
| Kalawatibai v. Soiryabai and Others (1991) 3 SCC 410 | Supreme Court of India | Followed | A section has to be read in its entirety as one composite unit. |
| Section 28, Trade Marks Act, 1999 | Considered | Rights conferred by registration of a trademark. | |
| Section 29, Trade Marks Act, 1999 | Considered | Infringement of registered trademarks. | |
| Section 30, Trade Marks Act, 1999 | Considered | Limits on effect of registered trade mark. | |
| Section 31, Trade Marks Act, 1999 | Considered | Registration to be prima facie evidence of validity. |
Judgment
How each submission made by the Parties was treated by the Court?
| Submission | Court’s Treatment |
|---|---|
| Appellant’s submission that the respondents’ use of “SAI RENAISSANCE” infringed upon their registered trademark “RENAISSANCE” under Sections 29(1), 29(2), and 29(3) of the Trade Marks Act, 1999. | Accepted. The Court held that the respondents’ mark was identical or deceptively similar and the services were within the same class. |
| Appellant’s submission that the High Court incorrectly applied the test under Section 29(4) of the Trade Marks Act, 1999. | Accepted. The Court agreed that Section 29(4) was not applicable in this case. |
| Appellant’s submission that the respondents’ use of their registered mark as part of their trade name for hotels falls under Section 29(5) of the Trade Marks Act, 1999. | Accepted. The Court agreed that this provision was applicable. |
| Appellant’s submission that the prefix “SAI” does not save the respondents from an action for infringement. | Accepted. The Court held that the core mark “RENAISSANCE” was being used. |
| Appellant’s submission that the test of deception or confusion was wrongly applied by the High Court. | Accepted. The Court agreed that in an action for infringement, where the respondent’s mark is identical, such a test is not applicable. |
| Appellant’s submission that once it is found that there is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated. | Accepted. The Court agreed that this was correct. |
| Respondents’ argument that the suit was not maintainable as the appellant was not a legal person. | Rejected. The Court held that the suit was maintainable. |
| Respondents’ argument that “RENAISSANCE” is a generic word. | Rejected. The Court did not accept this argument. |
| Respondents’ submission that they adopted the name “SAI RENAISSANCE” due to their devotion to Sri Sai Baba. | Rejected. The Court held that the use was not honest. |
| Respondents’ claim that their use of the mark amounted to honest concurrent use under Section 12 of the Trade Marks Act, 1999. | Rejected. The Court held that this was not applicable. |
| Respondents’ argument that the appellant acquiesced to their use of the mark. | Rejected. The Court did not accept this argument. |
| Respondents’ argument that the class of customers they catered to was different from that of the appellant. | Rejected. The Court held that this was not a relevant consideration in an infringement action. |
How each authority was viewed by the Court?
- The Supreme Court followed the principles laid down in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories [1965] 1 SCR 737* regarding the distinction between passing off and infringement actions.
- The Supreme Court followed the ruling in Ruston & Hornsby Limited v. Zamindara Engineering Co. (1969) 2 SCC 727*, stating that in an infringement action, if the defendant’s mark is identical, the court need not inquire about the likelihood of deception.
- The Supreme Court followed the precedent set in Laxmikant V. Patel v. Chetanbhai Shah and Another (2002) 3 SCC 65*, holding that the use of a registered trademark as part of a trade name constitutes infringement.
- The Supreme Court explained the observations made in Midas Hygiene Industries (P) Limited and Another v. Sudhir Bhatia and Others (2004) 3 SCC 90*, clarifying that while dishonesty in adoption of a mark is a factor, injunctions are normally granted in cases of infringement.
- The Supreme Court distinguished the case of Khoday Distilleries Limited (Now known as Khoday India Limited) v. Scotch Whisky Association and Others (2008) 10 SCC 723*, noting that it was related to rectification of a trademark and not infringement.
- The Supreme Court distinguished the case of Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited (2018) 9 SCC 183*, stating that the marks and products in that case were different.
- The Supreme Court distinguished the case of Neon Laboratories Limited v. Medical Technologies Limited and Others (2016) 2 SCC 672*, noting that it was related to a temporary injunction based on the “first in the market” test.
- The Supreme Court distinguished the case of Corn Products Refining Co. v. Shangrila Food Products Limited [1960] 1 SCR 968*, stating that it was not applicable to the present case.
- The Supreme Court followed the principles of interpretation laid down in Reserve Bank of India v. Peerless General Finance and Investment Co. Ltd. and Others (1987) 1 SCC 424*, emphasizing that interpretation must depend on the text and the context.
- The Supreme Court followed the principle in Balasinor Nagrik Cooperative Bank Ltd. v. Babubhai Shankerlal Pandya and Others (1987) 1 SCC 606*, stating that a section must be read in its entirety.
- The Supreme Court followed the principle in Kalawatibai v. Soiryabai and Others (1991) 3 SCC 410*, stating 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 influenced by the following factors:
- Statutory Rights: The court emphasized the statutory rights of a registered trademark holder, highlighting that the Trade Marks Act, 1999, provides exclusive rights to the registered proprietor.
- Infringement: The court found that the use of “SAI RENAISSANCE” by the respondents was an infringement of the appellant’s registered trademark “RENAISSANCE.”
- Identity and Similarity: The court noted that the marks “RENAISSANCE” and “SAI RENAISSANCE” were visually and phonetically similar, and the services were within the same class.
- Incorrect Application of Law: The court found that the High Court had incorrectly applied the law by relying on Section 29(4) instead of Section 29(2)(c) and Section 29(5) of the Trade Marks Act, 1999.
- Honest Practices: The court emphasized that for the respondents to claim protection under Section 30(1) of the Trade Marks Act, 1999, their use of the mark must be in accordance with honest practices, which was not established.
The court’s reasoning was heavily based on the legal provisions of the Trade Marks Act, 1999, and the principles established in prior case laws. The court focused on the statutory rights of the appellant as the registered trademark holder and the fact that the respondents’ use of the mark was a clear infringement.
| Sentiment | Percentage |
|---|---|
| Statutory Rights and Infringement | 40% |
| Visual and Phonetic Similarity | 25% |
| Incorrect Application of Law by High Court | 20% |
| Lack of Honest Practices | 15% |
Fact:Law Ratio
| Category | Percentage |
|---|---|
| Fact | 30% |
| Law | 70% |
The court’s decision was significantly influenced by legal considerations (70%), with a lesser emphasis on the factual aspects of the case (30%).
Logical Reasoning
Issue 1: Whether the Plaintiff is the registered proprietor of the trade mark/service mark “RENAISSANCE” under the Trade Mark Act 1999?
Issue 2: Whether the plaintiff is the proprietor of trade mark/service mark “Renaissance” on account of prior adoption and use in relation to hotels and hospitality business?
Issue 3: Whether the plaintiff proves that the defendant is infringing the trade mark of the plaintiff?
Issue 4: Whether the plaintiff proves that the action of defendant is one of passing off?
Issue 4: Whether the plaintiff proves that the action of defendant is one of passing off?
Issue 5: Whether the plaintiff is entitled to an order for delivery of goods, labels or any other printed materials?
Issue 6: Whether plaintiff is entitled for rendition of accounts and damages?
Issue 7: Whether the suit is not maintainable for want of signing and verification of the plaint by person having locus standi?
Issue 8: Whether the defendants prove that they have been honestly and continuously using the trade mark Hotel SAIRenaissance?
Final Decision
The Supreme Court allowed the appeal filed by Renaissance Hotel Holdings Inc. The court set aside the judgment of the High Court of Karnataka at Bengaluru and restored the decree passed by the trial court.
The Supreme Court restrained the respondents from using the trademark “SAI RENAISSANCE” or any other mark deceptively similar to “RENAISSANCE” for hotel and hospitality services.
The court held that the use of the registered trademark “RENAISSANCE” by the respondents, even with the prefix “SAI,” constituted an infringement under the Trade Marks Act, 1999.