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SUPREME COURT OF INDIA
(From the High Court Of Karnataka At Bengaluru)
L. Nageswara Rao, B.R. Gavai, B.V. Nagarathna, JJ.
Renaissance Hotel Holdings Inc. – Appellant
Versus
B. Vijaya Sai and Others – Respondents
Civil Appeal No. 404 of 2022 [Arising out of SLP(C) No. 21428 of 2019]
Decided On : 19-01-2022
The Supreme Court held that the High Court erred in reversing the trial court's order granting an injunction against the use of a trade mark identical to the appellant's registered trade mark. The High Court failed to consider the relevant provisions of the Trade Marks Act, 1999, and erred in applying the test for infringement under Section 29(4) of the Act when the case fell under Section 29(2)(c) read with Section 29(3). The Court held that the use of the appellant's trade mark as part of the respondents' trade name or business concern was an infringement under Section 29(5) of the Act, and that the respondents' use of a mark phonetically and visually similar to the appellant's trade mark was an infringement under Section 29(9) of the Act. The Court also held that the High Court erred in relying on Section 30(1)(b) of the Act without considering the requirement of honest practices under Section 30(1)(a).
Fact of the Case:
The appellant, a company incorporated in the United States, owned the registered trade mark "RENAISSANCE" in India for hotel, restaurant, catering, bar and cocktail lounge services. The respondents, ardent devotees of Sri Sai Baba, operated two hotels in Bangalore and Puttaparthi under the name "SAI RENAISSANCE". The appellant filed a suit for infringement of its trade mark and passing off. The trial court granted an injunction restraining the respondents from using the mark "SAI RENAISSANCE" or any other mark deceptively similar thereto. The High Court reversed the trial court's order, holding that the appellant had failed to establish that its trade mark had a reputation in India and that the respondents' use of the mark was honest and not likely to cause confusion.
Finding of the Court:
The Supreme Court held that the High Court erred in reversing the trial court's order. The Court found that the appellant's trade mark was identical to the respondents' mark and that the services provided by the parties were similar. The Court also found that the respondents' use of the appellant's trade mark as part of their trade name or business concern was an infringement under Section 29(5) of the Trade Marks Act, 1999, and that the respondents' use of a mark phonetically and visually similar to the appellant's trade mark was an infringement under Section 29(9) of the Act. The Court further held that the High Court erred in relying on Section 30(1)(b) of the Act without considering the requirement of honest practices under Section 30(1)(a).
Issues: 1. Whether the High Court erred in reversing the trial court's order granting an injunction against the use of a trade mark identical to the appellant's registered trade mark? 2. Whether the High Court erred in applying the test for infringement under Section 29(4) of the Trade Marks Act, 1999, when the case fell under Section 29(2)(c) read with Section 29(3)? 3. Whether the use of the appellant's trade mark as part of the respondents' trade name or business concern was an infringement under Section 29(5) of the Act? 4. Whether the respondents' use of a mark phonetically and visually similar to the appellant's trade mark was an infringement under Section 29(9) of the Act? 5. Whether the High Court erred in relying on Section 30(1)(b) of the Act without considering the requirement of honest practices under Section 30(1)(a)?
Ratio Decidendi: 1. The High Court erred in reversing the trial court's order granting an injunction against the use of a trade mark identical to the appellant's registered trade mark because the case fell under Section 29(2)(c) read with Section 29(3) of the Trade Marks Act, 1999, which presumes that infringement is likely to cause confusion. 2. The High Court erred in applying the test for infringement under Section 29(4) of the Act because the case did not fall under that provision, which requires the appellant to establish that its trade mark has a reputation in India and that the respondents' use of the mark is detrimental to the distinctive character or repute of the trade mark. 3. The use of the appellant's trade mark as part of the respondents' trade name or business concern was an infringement under Section 29(5) of the Act because it is prohibited to use a registered trade mark as part of a trade name or business concern. 4. The respondents' use of a mark phonetically and visually similar to the appellant's trade mark was an infringement under Section 29(9) of the Act because the distinctive elements of a registered trade mark include words, and the trade mark may be infringed by the spoken use of those words as well as by their visual representation. 5. The High Court erred in relying on Section 30(1)(b) of the Act without considering the requirement of honest practices under Section 30(1)(a) because both conditions must be met in order to avail the benefit of Section 30.
Final Decision: The Supreme Court allowed the appeal, quashed the High Court's judgment and order, and maintained the trial court's judgment and decree.
JUDGMENT :
B.R. GAVAI, J.
1. Leave granted.
2. This appeal challenges the judgment and order dated 12th April 2019 passed by the Single Judge of the High Court of Karnataka at Bengaluru in Regular First Appeal No. 1462 of 2012, thereby allowing the appeal filed by the respondents-defendants herein and setting aside the judgment and decree of the Principal District Judge, Bangalore Rural District, Bangalore (hereinafter referred to as the “trial court”), dated 21st June 2012 passed in O.S. No. 3 of 2009, in favour of the appellant-plaintiff herein.
3. The facts in brief giving rise to the filing of the present appeal are as under :
The appellant-plaintiff filed a suit being O.S. No. 3 of 2009 before the trial court claiming a decree of permanent injunction to restrain the respondents-defendants from using the trade mark “SAI RENAISSANCE” or any other trade mark identical with the appellant-plaintiff’s trade mark “RENAISSANCE”, and from opening, operating, managing, franchising, licensing, dealing directly or indirectly in hotels, restaurant or hospitality services of any manner under the trade mark “RENAISSANCE”, and to deliver all the goods, label or any other printed material bearing the impugned mark “SAI RENAISSANCE” or “RENAISSANCE” and for damages amounting to Rs.3,50,000/- for having used its trade mark.
4. It is the case of the appellant-plaintiff that it is a company incorporated under the laws of the State of Delaware, United States of America. It is the further case of the appellant-plaintiff that it is the holder and proprietor of the trade mark and service mark “RENAISSANCE” in relation to hotel, restaurant, catering, bar, cocktail lounge, fitness club, spa services, etc. It is the further case of the appellant-plaintiff that the trade mark “RENAISSANCE” has also been used in relation to a wide variety of goods commonly found in the appellant-plaintiff’s hotels such as bath robes, slippers, shirts, hats, matchboxes, writing paper, candies, etc. These products are imprinted with the appellant-plaintiff’s trade mark “RENAISSANCE”. It is the case of the appellant-plaintiff that the trade mark “RENAISSANCE” has been used by it for its hospitality business throughout the world since the year 1981. That it is one of the world’s largest and leading chains of hotels. That it is using the trade mark “RENAISSANCE” in India since 1990. It is the case of the appellant-plaintiff that it also runs a hotel and convention centre in Mumbai and in Goa. That it also owns a registration for the domain name www.renaissancehotels.com and spends about US$ 14 million annually for worldwide advertisements and promotional activities.
5. It is the further case of the appellant-plaintiff that it has the registration for the trade mark and service mark “RENAISSANCE” in India, under Registration No. 610567 in Class 16 for “printed matter, periodicals, books, stationery, manuals, magazines, instructional and teaching materials and office requisites” and Registration No. 1241271 in Class 42 for “hotel, restaurant, catering, bar and cocktail lounge services, provisions of facilities for meetings, conferences and exhibitions, reservation services for hotel accommodations”, respectively.
6. According to the appellant-plaintiff, it came across a website at www.sairenaissance.com through which it discovered that the respondents-defendants were operating one hotel in Bangalore and another one in Puttaparthi under the impugned name “SAI RENAISSANCE”, which wholly incorporates the appellant-plaintiff’s well-known trade mark and service mark “RENAISSANCE”. The appellant-plaintiff immediately instructed that an investigation be carried out and sought legal advice with regard to the violation of its intellectual property. Upon investigation, it was revealed that the respondents-defendants were running one hotel at Kadugodi, near Whitefield Railway Station, Ba
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