Decision of High Court erroneous: Supreme Court gives protection to Renaissance trademark

Decision of High Court erroneous: Supreme Court gives protection to Renaissance trademark

“The High Court has failed to take into consideration that in order to avail the benefit of Section 30 of the Trade Marks Act, apart from establishing that the use of the impugned trade mark was not such as to take unfair advantage of or is detrimental to the distinctive character or repute of the trademark, it is also necessary to establish that such a use is in accordance with the honest practices in industrial or commercial matters.”
– Supreme Court of India

Facts of the Case

In the present case, the appellant-plaintiff came across a website and discovered that the respondent-defendant is operating a hotel in Bangalore and another one in Puttaparthi under the name of “SAI RENAISSANCE”. Now, as the business they were engaged in was the same, the plaintiff-appellant in 2009 filed a suit O.S No.3 before the trial court. The matter stated in the plaint was infringement of trademark of the appellant-plaintiff which was registered on the name of “SAI RENAISSANCE”.

The appellant-plaintiff claimed permanent injunction to restraint the respondents-defendants from using the trademark or any other identical trademark as that of the appellant and restricting from opening, managing, franchising, licensing, dealing directly or indirectly in hotels, restaurants or hospitality services of any manner under the trademark “RENAISSANCE”. The plaintiff-appellant also claimed Rs. 3,50,000 as damages for having used its trademark.

Trial Court’s Decision

The Trial court (Principal District Judge, Bangalore Rural District) affirmed that the respondent-defendant has infringed the trademark of the plaintiff and restrained them from using the trademark “SAI RENAISSANCE” or any such deceptively similar mark upon printed matter, periodicals, books, instructional and teaching materials, stationary, manuals etc. and from managing opening, franchising, licensing directly or indirectly in hotels, restaurants or hospitality services under the trademark “RENAISSANCE” and use of similar mark as domain name. However, the court rejected the claim of the appellant-plaintiff for damages.

Aggrieved by this decision of the trial court, the defendant appealed to the High Court of Karnataka at Bengaluru.

High Court’s Decision

The High Court observed that in the said case none of the customers has been misled by the name of the hotel and the respondent serves only vegetarian without liquor. The court observed that the defendant has not taken unfair advantage or that its existence was detrimental to the distinctive character or reputation of the appellant’s trademark. Hence, the High Court observed that there was no trademark infringement, set aside the trial court’s judgment and decree, and dismissed the suit. The plaintiff-appellant moved to the apex court being aggrieved by the decision of the High Court.

Apex Court’s Decision

Learned counsel Shri K.V. Viswanathan appeared on behalf of the appellant while Shri B.C Sitarama Rao presented the case on the defendant’s side.

Appellant’s contentions:

Shri Viswanathan submitted that the High Court has erred in applying the test provided in Section 29(4) of the Act as it contains “and”, so it would be applicable only if all the conditions are satisfied. He also submitted that the defendant was using appellants registered trademark as a part of their trade name for hotels and business concern which squarely fell under Section 29(5)  of the said Act.

Referring to Laxmikant V. Patel vs. Chetanbhai Shah and Another, Shri Viswanathan contended that mere use of a prefix ‘SAI’ along with the term ‘RENAISSANCE’ would not save the defendant from an action for infringement of the registered trademark.

Further he relies on the judgement of Rustom & Hornsby Limited vs. Zamindara Engineering and submits that the test of deception or confusion has been wrongly applied by the High Court as such test would not be applicable where defendants trademark is identical with the appellants trademark.

Learned counsel also emphasized on the judgement of Kaviraj Pandit Durga Dutt Sharma vs Navaratna Pharmaceutical Laboratories which states that if the defendants mark is close to that of the appellants and once the court finds that there is an imitation, no further evidence is required to establish infringement.

The High Court has also not applied the law laid down in case of Midas Hygiene Industries (P) Limited and Another vs. Sudhir Bhatia and others.

Defendant’s contention

Learned counsel Shri B.C. Sitharama Rao submitted that the use of mark ‘SAI RENAISSANCE’ is inspired by the reincarnation of Shri Shirdi Sai Baba and amounts to honest use under Section 12 of the said Act. He also submitted that the class of customers of both the businesses were different and that the defendant served only vegetarian without liquor. He cited the judgement of Khoday Distillaries Limited vs. Scotch whisky Association and Others.

The Final Judgement

The Supreme Court observed that the Section 29(2) deals with the situation where the trademark is identical or similar and goods covered by that trademark are identical or similar, Section 29(4) of the said Act deals with the situation where the trademarks are similar but the goods and services are not. Here the use of the word ‘RENAISSANCE’ phonetically or visually will be an act of infringement under Section 29(9) of the Act.

The court also referred to guiding principles laid down by J. Chinappa Reddy in the judgement of Reserve Bank of India vs. Peerless General Finance and Investment Co. Ltd. and Others and held that it is that the textual interpretation should match with the contextual one. The Apex court observed that the High Court has erred in considering Section29(4)(c) only and has ignored other parts of Section 29(4). The High Court has also not considered it mandatory to find whether the use of the trademark was in accordance with the honest practices in industrial or commercial matters in accordance to Section 30 of the Act.

Hence, the Apex Court arrived at a conclusion that the decision of the trial court has to be maintained.

Read the judgement here

– Saurav Kumar Singh (Intern), BHU, Varanasi

Disclaimer: This brief is intended to provide general guidance to the subject matter. It does not contain legal advice. For any specific advice/corrections, write to [email protected]


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