Trademark| RENAISSANCE and SAI RENAISSANCE phonetically and visually similar; Twin conditions must be fulfilled to get benefit of Section 30(1) of the Trademarks Act: SC

Supreme Court: In a Trademark infringement case, the bench of L. Nageswara Rao, BR Gavai* and BV Nagarathna, JJ has ordered in favour of Renaissance Hotel Holdings and has held that the words “RENAISSANCE” and “SAI RENAISSANCE” are phonetically as well as visually similar. 

Factual Background

The Court was deciding the case initiated by the Renaissance Hotel Holdings Inc., a company incorporated under the laws of the State of Delaware, United States of America, which 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. The Company discovered that the respondents were operating one hotel in Bangalore and another one in Puttaparthi under the name “SAI RENAISSANCE”, which wholly incorporates the well-known trade mark and service mark “RENAISSANCE”.

The appellant submitted that the trade mark “RENAISSANCE” has been used by it for its hospitality business throughout the world since the year 1981 and that it is one of the world’s largest and leading chains of hotel and has been using the trade mark “RENAISSANCE” in India since 1990.

It was argued that the respondents were copying the trade mark “RENAISSANCE”, its stylized representation, signage and business cards and leaflets in such a manner so as to suggest an affiliation, association, nexus or connection with the business of the appellant.

The trial court restrained the respondents

  • from using the trade mark “SAI RENAISSANCE” or any other trade mark which incorporates the appellant-plaintiff’s trade mark “RENAISSANCE” or is deceptively similar.
  • from opening, operating, managing, franchising, licensing, dealing directly or indirectly in hotels, restaurant, or hospitality services of any manner under the trade mark or service mark “RENAISSANCE” or any deceptively similar mark “RENAISSANCE” or any deceptively similar mark including on the internet as a domain name or in any manner so as to pass off their services as those of or concocted with the appellanf.

The trial court, however, rejected the claim of the appellant for damages.

The Karnataka High Court, however, held that no evidence was produced by the appellant to show that the respondents were taking unfair advantage of its trade mark or that the use of the word   “SAI RENAISSANCE” was detrimental to the distinctive character or reputation of the appellant’s trade mark.

Analysis

The Court noticed that the appellant’s trademark “RENAISSANCE” is registered under Class 16 and Class 42, which deals with hotels and hotel related services and goods. The mark and the business name “SAI RENAISSANCE”, which was being used by the respondents, was also in relation to Class 16 and Class 42.   The Court also observed that that the words “RENAISSANCE” and “SAI RENAISSANCE” are phonetically as well as visually similar.

Hence, the present case stood squarely covered by the provisions of Section 29(2)(c) read with sub-section (3) of Section 29 of the the Trade Marks Act, 1999. The present case also stood covered under sub-sections (5) and (9) of Section 29 of the said Act.

The Court noticed that the High Court erred in taking into consideration clause (c) of sub-section (4) of Section 29 of the said Act in isolation without noticing other parts of the said sub-section (4) of Section 29 of the said Act and the import thereof. The High Court has failed to take into consideration that in order to avail the benefit of Section 30 of the said Act, apart from establishing that the use of the impugned trademark was not such as to take unfair advantage of or is detrimental to the distinctive character or repute of the trade mark, it is also necessary to establish that such a use is in accordance with the honest practices in industrial or commercial matters.

Explaining the rule of interpretation, the Court said,

“It is thus trite law that while interpreting the provisions of a statute, it is necessary that the textual interpretation should be matched with the contextual one.  The Act must be looked at as a whole and it must be discovered what each section, each clause, each phrase and each word is meant and designed to say as to fit into the scheme of the entire Act. No part of a statute and no word of a statute can be construed in isolation.  Statutes have to be construed so that every word has a place and everything is in its place.”

As per Section 30(1), for availing the benefit of Section 30 of the said Act, it is required that the twin conditions, i.e., the use of the impugned trade mark being in accordance with the honest practices in industrial or commercial matters, and that such a use is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark, are required to be fulfilled.  In sub-section (1) of Section 30 of the said Act, after clause (a), the word used is ‘and’, like the one used in sub-section (4) of Section 29 of the said Act, in contradistinction to the word ‘or’ used in sub-section (2) of Section 29 of the said Act. The High Court has referred only to the condition stipulated in clause (b) of sub-section (1) of Section 30 of the said Act ignoring the fact that, to get the benefit of sub-section (1) of Section 30 of the said Act, both the conditions had to be fulfilled.

“Unless it is established that such a use is in accordance with the honest practices in industrial or commercial matters, and is not to take unfair advantage or is not detrimental to the distinctive character or repute of the trade mark, one could not get benefit under Section 30(1) of the said Act.”

Therefore, it was noticed that by picking up a part of the provisions in sub¬section (4) of Section 29 of the said Act and a part of the provision in sub-section (1) of Section 30 of the said Act and giving it a textual meaning without considering the context in which the said provisions have to be construed, was not permissible.

Hence, it was held that the High Court was not justified in interfering with the well-reasoned order of the trial court.

[Renaissance Hotel Holdings Inc. v. B. Vijaya Sai, 2022 SCC OnLine SC 61, decided on 19.01.2022]


*Judgment by: Justice BR Gavai


Counsels:

For appellant: Senior Advocate K.V. Viswanathan

For respondent: Advocate B.C. Sitarama Rao

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