Supreme Court sets aside High Court’s order and holds Renaissance and Sai Renaissance to be similar

The Supreme Court, in this Appeal, reinforced the significance of interpreting the statutes. The Court observed that the textual interpretation should match the contextual one.

Facts in brief

Renaissance Hotel Holdings Inc, (appellant), a company incorporated under the laws of the State of Delaware, United States of America, filed the suit against B. Vijaya Sai and others (respondents) before the District Court, Bangalore, alleging trademark infringement, passing off, damages, etc., on account of the use of the mark/name, ‘Sai Renaissance’ in relation to their hotel business. Renaissance Hotel claims to be the registered proprietor of the mark ‘Renaissance’ in classes 16 and 42.

The District Court, Bangalore, partly decreed the suit by restraining respondents from using the trademark ‘Sai Renaissance’ or any other mark which incorporates the trademark ‘Renaissance’ or is deceptively similar. However, the Court rejected the claim for damages. Sai Renaissance’ appealed against the order.

The High Court in Appeal set aside the order of the District Court, holding that the appellant failed to (1) disclose its trans-border reputation (2) show that respondents were taking unfair advantage of the trademark and (3) that the parties catered to a different class of customers. Therefore, no confusion would be caused.

Renaissance Hotel Holdings assailed the High Court’s order before the Supreme Court.

Appellant (Renaissance Hotel Holdings) before the Supreme court contended:

  1. The test laid out under Sections 29(1)29(2), and 29(3) of the Trade Marks Act, 1999, would be applicable in the present case considering the marks are similar and the class of goods or services are identical or similar. 
  2. The High Court has erred in applying the test as provided under Section 29(4) of the Trademarks Act and only referring to the condition stipulated in clause (c) of Section 29(4) of the said Act to give a finding that the appellant has failed to show that the mark has a reputation in India. 
  3. The High Court failed to consider that respondent was using the registered trademark Renaissance as a part of their trade name for the hotels and their business concern. Therefore, the case squarely falls under sub−section (5) of Section 29 of the said Act. Thus, the respondent was liable for infringement of the registered trademark ‘Renaissance.’ 
  4. The High Court, despite observing that a) appellant was a prior user and registered proprietor of the mark ‘Renaissance,’ b) respondent adopted and is using an identical mark along with the prefix ‘Sai’, c) both parties are in the hotel and hospitality business, erred in setting aside the trial court’s order restraining respondents from using the trademark ‘Sai Renaissance’.

Respondent countered the contentions on the following:

  1. ‘Renaissance’ is a generic English word, and no one can claim monopoly over the same.
  2. Renaissance means re−birth, and the respondent adopted the name ‘Sai Renaissance’ for its hotel to signify the birth of Sri Puttaparthi Sai Baba as a reincarnation of Sri Shirdi Sai Baba. The use of the mark ‘Sai Renaissance’ amounts to honest concurrent use. 
  3. High Court has rightly held that the customers to which the rival parties cater differ and accordingly allowed the Appeal.

The Supreme Court, after considering the pleadings, arguments, and case laws, held:

  • In the instant case, the District Court and High Court have observed that the parties are using an identical mark ‘Renaissance’ concerning hotel services which fall in classes 16 and 42 for which the appellant has the registration. Thus, the trial court rightly restrained the respondents from using ‘Renaissance’ or any deceptively similar mark.
  • The High Court’s finding that the appellant has failed to prove that the mark ‘Renaissance’ has garnered a reputation in India and has not succeeded in establishing fraudulent use by the respondents is incorrect. The High Court further relied on S. 29(4)(c) to assert that there was no likelihood of confusion due to the differences in target customers is not the correct interpretation. The legislative intent is clear when the trademark of the defendant is identical with the registered trademark of the plaintiff and that the goods or services of the defendant are identical with the goods or services covered by the registered trade mark, the Court shall presume that it is likely to confuse the public. 
  • The High Court committed an error in relying on Section 29(4)(c) of the Act in isolation. In fact, sub-clauses (a) and (b) of Section 29(4) of the Act make it clear that the said section comes into play only when the rival goods/services are different, which is not the case here. 
  • Commenting on the differences between ‘passing off’ and ‘infringement’, the Court observed that in an action for infringement, where the rival trademarks are identical, the Court is not required to enquire whether the infringement is likely to cause confusion or deception. 
  • Moreover, the High Court’s reliance on Section 30(1)(b) of the Act to hold that appellant failed to prove the respondents use took unfair advantage of or was detrimental to the distinctive nature of the trademark is again erroneous. The High Court failed to consider that to seek the benefits of Section 30 of the Act, apart from proving that respondent’s use of the mark was not such as to take unfair advantage of or be detrimental, it is also incumbent that such use is in accordance with honest practices, which is not the case in the instant matter. 

The Supreme Court emphasised the principle in interpreting statutes that if the sub-clauses are separated by the word ‘and’ and not ‘or’, then all sub-clauses are considered conjunctively and not in isolation. The Apex Court further observed that by picking a part of the provisions in sub section (4) of Section 29 and a part of the provision in sub-section (1) of Section 30 of the Act and giving it a textual meaning without taking into consideration the context in which the said provisions have to be interpreted, was not correct.

In light of the above, the Supreme court set aside the order of the High Court and restrained the use of the mark/name Sai Renaissance.

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