In the matter of Renaissance Hotel Holdings Inc. v B. Vijaya Sai and Others, Civil Appeal No 404 of 2022 (Appeal), the Hon'ble Supreme Court of India (the "Supreme Court") has passed a judgment dated 19 January 2022 ("Decision") granting injunction against the use of the trade mark 'SAI RENAISSANCE' ("Impugned Mark") being identical to the mark 'RENAISSANCE' ("Trade Mark").
Factual background
In 2009, Renaissance Hotel Holdings Inc ("Plaintiff") being the registered proprietor (inter alia in Class 42 relating to hospitality services) of the Trade Mark, filed a suit for trade mark infringement against B. Vijaya Sai and Others ("Defendants") before the District Court, Bangalore ("Trial Court"), for restraining the Defendants from using the Impugned Mark in relation to identical hospitality services and other reliefs.
The Trial Court vide order dated 21 June 2012 ("Trial Court's Order") partially decreed the suit in Plaintiff's favour by granting permanent injunction and denying any damages. The Defendant challenged the Trial Court's Order before the High Court of Karnataka ("High Court").
The High Court vide its order dated 12 April 2019 ("HC Order") reversed the Trial Court's Order inter alia on the ground that Plaintiff: (i) failed to disclose trans-border reputation earned by it; (ii) failed to show that Defendants were taking unfair advantage of the Trade Mark; and (iii) the parties catered to different sets of customers, etc. Plaintiff challenged the HC Order before the Supreme Court.
Rival contentions
The Plaintiff claimed to be using the Trade Mark internationally since around 1981. In India, the Plaintiff's earliest registration is of the year 1993 in Class 16 and for hospitality business (falling in class 42), the Plaintiff claimed to be using and has registration right for the Trade Mark since October 2003. The Plaintiff inter alia contended that: (i) its case was squarely covered under Sections 29(1), (2) and (3) of the Trade Marks Act 1999 ("Act") which provides that in case the defendant's mark and services are identical / similar to the plaintiff's mark and services, it amounts to infringement. In fact, under Section 29(3) of the Act, in case the rival marks and services are identical, there is a statutory presumption of likelihood of confusion; (ii) the High Court erroneously applied Section 29(4)(c) of the Act in denying injunction. Section 29(4) of the Act is attracted when rival marks are identical / similar but the rival goods / services are not similar and in such a situation, there is a higher threshold upon a plaintiff to prove reputation in its mark; and (iii) the High Court did not consider Section 29(5) of the Act which provides for infringement when a defendant uses the infringing mark also as part of its trade name, and the Defendants were using the Impugned Mark as their hotel name.
In response, the Defendant inter alia contended that: (i) the term 'Renaissance' is a generic English word and Plaintiff cannot claim monopoly over the same; (ii) the suit suffered from delay, laches and acquiescence as the Defendants were using the Impugned Mark since 2001 and the suit was filed after a long time gap of around eight years; (iii) use of the Impugned Mark amounted to honest concurrent use under Section 12 of the Act; and (iv) the class of customers catered by the parties was different.
Findings and Decision
The Supreme Court revisited the entire scheme of the Act and also the relevant judicial precedents. The Supreme Court observed that the Impugned Mark was identical to the Trade Mark and was being used in relation to identical services, and hence, there was a presumption of likelihood of confusion as per Section 29(3) of the Act. The Supreme Court further observed that the High Court erroneously relied upon Section 29(4)(c) of the Act standalone without taking into consideration sub-clauses (a) and (b) of Section 29(4) of the Act which makes it clear that Section 29(4) of the Act is applicable only when the rival goods / services are different. Referring to the High Court's reliance on Section 30(1)(b) of the Act, to hold that the Plaintiff did not show that the Impugned Mark took unfair advantage of or was detrimental to the distinctive character or repute of the Trade Mark, the Supreme Court observed that the High Court again erred by failing to consider the import of Section 30(1)(a) of the Act which provides for an exemption from infringement if the defendant's use of a mark is in accordance with honest practices which is not true in the facts of this case. The Supreme Court reiterated that the basic tenet of interpretation of statutes that if the sub-clauses are separated by the word 'and' and not 'or', then all sub-clauses are to be considered cumulatively and not standalone. The Supreme Court further observed that use of the Impugned Mark as a trade name would fall squarely in Section 29(5) of the Act.
In view of the above, Supreme Court reversed the HC Order.
Comment
The Decision is a welcome treatise on the scheme of the Act and the purposive interpretation of the provisions of the Act. The Decision rightly relies upon Section 29(3) of the Act which is not an oft-used provision which lays down a statutory presumption that when a defendant uses an identical mark in relation to identical services, the plaintiff does not require to show that the infringing act of the defendant is likely to cause confusion on part of the public, and such likelihood of confusion shall be presumed to have happened. It is often difficult for a brand owner to prove confusion in the market by way of evidence. Also, a suit trial is a time-consuming affair. Therefore, the Decision would aid brand owners in obtaining quick injunctive reliefs in cases of such blatant infringements.
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