RENAISSANCE HOTEL HOLDINGS INC. VS B. VIJAYA SAI

 

RENAISSANCE HOTEL HOLDINGS INC. VS B. VIJAYA SAI

 

Judgement Date : 19 JANUARY, 2022

Citation : CIVIL APPEAL NO. 404 OF 2022[Arising out of SLP(C) No. 21428 of2019]

Judges : JUSTICE B.R. GAVAI, JUSTICE B.V. NAGARATHNA, JUSTICE L.NAGESWARA RAO

Court : SUPREME COURT OF INDIA [CIVIL APPELLATE JURISDICTION]

 

Parties : Appellant - RENAISSANCE HOTEL HOLDINGS INC.

               Respondent - B. VIJAYA SAI AND OTHERS

 

FACTS

 

1.       The appellant Renaissance Hotel Holdings Inc. is the proprietor of the registered trademark “RENAISSANCE” for hotels, restaurants, bars, etc, and for the goods commonly found in its hotels. According to them, they have been using this trademark in India since 1990.

 

2.       The respondent B. Vijaya Sai claims that they adopted the name “SAI RENAISSANCE” for their hotels and were running two hotels  in Bangalore and Puttaparthi for the last 15 years and they have established their first hotel in 2001.

 

3.       The appellant first filed the suit in the year 2009 to accuse the respondent for copying their trademark “RENAISSANCE”, its stylized depiction, signage, and business cards and brochures to imply a connection with the appellant’s service and to restrain the respondent from using the trademark “SAI RENAISSANCE” or any other trade mark identical with the appellant’s trade mark.

 

4.       The respondentscontented that RENAISSANCE is a generic word, not a well-known mark, and the class of consumers for both the marks is different.

 

5.       The Trial Court ruled in favour of the appellant by prohibiting the respondents from using the trademark “SAI RENAISSANCE” and from opening, operating, managing, franchising, licensing, or dealing directly or indirectly in hotels, restaurants, or hospitality services of any kind under the said trademark, including the use of the domain name ‘www.sairenaissance.com’.

 

6.       The respondents were dissatisfied with the Trial Court’s decision and took their case to the Kerala High Court. The High Court stated that the evidence presented by the appellant was insufficient to support the claim of infringement.

 

7.       The appellant was aggrieved by the decision of the High Court and approached the Supreme Court.

 

ISSUES

 

1.       Whether the respondents infringed on the appellant’s trademark “RENAISSANCE” ?

 

2.       Whether the decision of the High Court in overturning the decision of the Trial Court, and holding there to be no infringement of the appellant’s trademark was valid ?

 

JUDGEMENT

 

The Apex Court first noted that both the Trial Court and the High Court determined that the respondents'/defendants' trademark was identical with that of the appellant/plaintiff and that the services offered by the respondents/defendants were classified as Class 16 and Class 42, respectively. As a result, the appellant's/plaintiff's goods will be protected by Section 29(2)(c) read with Section 29(3) of the Act. The Court also noted that subsection (2) of Section 29 of the said Act deals with situations in which the trademark is identical or similar and the goods covered by such a trademark are identical or similar, whereas subsection (4) of Section 29 of the said Act deals with situations in which the trademark is identical but the goods or services are not similar to those for which the trademark is registered. Furthermore, it is an undisputed fact that the appellant’s trademark “RENAISSANCE” was registered in relation to goods and services in Classes 16 and 42, and the Court noted that the defendants were using the mark “SAI RENAISSANCE”, which is identical or similar to that of the appellant’s trademark, in relation to goods and services similar to those of the appellant. As a result, it was not available to the High Court to consider whether the appellant’s trademark has a reputation in India and whether the use of the mark without due cause takes unfair advantage of or is damaging to the registered trademark. The Court relied on the decision in Ruston & Hornsby Limited v. Zamindara Engineering Co to reach the conclusion that in an action for infringement, once it is determined that the defendant's trademark is identical to the plaintiff's registered trademark, the Court cannot inquire whether the infringement is likely to deceive or cause confusion. In an infringement lawsuit, an injunction would be given as soon as it was proven that the defendant was using the plaintiff's trademark illegally. The Court further recognized that the word “SAI RENAISSANCE” was phonetically and visually identical to “RENAISSANCE,” and that using it would violate subsection (9) of Section 29 of the aforementioned Act. The Court also noted that Section 30(1) of the said Act reveals that in order to benefit from Section 30 of the said Act, the twin conditions, i.e., the use of the impugned trade mark being in accordance with honest practices in industrial or commercial matters, and such use not being such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark, must be fulfilled, and In subsection (1) of Section 30 of the said Act, after clause (a), the word used is ‘and’, as opposed to the word ‘or’ used in subsection (2) of Section 29 of the said Act, so the High Court erred by only referring to the condition stipulated in clause (b) of subsection (1) of Section 30 of the said Act, ignoring the fact that to get the benefit of subsection (1) of Section 30 of the said Act, both conditions had to be fulfilled. As a result, the High Court ignored the rules of textual and contextual interpretation articulated in the case of Reserve Bank of India v. Peerless General Finance and Investment Co. Ltd. and Others. As a result, the Supreme Court held that the defendants had violated the appellant's trademark "RENAISSANCE" and overturned the High Court's decision.

 

CONCLUSION

 

The Apex Court concluded that the High Court erred in its interpretation of the criteria set forth in Section 29(4) of the Act because it did not take into account the other applicable provisions of Section 29(4), as well as other laws that covered the facts of the case at hand. The Supreme Court overruled the High Court's decision and upheld the Trial Court's decision as well-reasoned.

 

PRECEDENTS

 

1.       Ruston & Hornsby Limited v. Zamindara Engineering Co.

2.       Balasinor Nagrik Cooperative Bank Ltd. v. Babubhai Shankerlal Pandya and Ors.

3.       Midas Hygiene Industries (P) Limited and Another v. Sudhir Bhatia and Others

4.       Khoday Distilleries Limited (now known as Khoday India Limited) v. Scotch Whisky Association & Ors.

5.       Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited