Court:  Supreme Court of India

JUDGMENT DATE: 19 January 2022

JUDGES: Justice B.R. Gavai, Justice B.V. Nagarathna, Justice L. Nageswara Rao

PARTIES

 Complainants (s): Renaissance Hotel Holdings Inc.

 Respondent (s): B. Vijaya Sai and others

SUBJECT

In the current case, an appeal was lodged with the Supreme Court of India against an order of the Karnataka High Court where the Supreme Court found that the respondents / defendants had not violated the plaintiff’s / RENAISSANCE trademark under Trade Marks. Act, 1999.

FACTS

The court ruled in favor of Renaissance Hotel Holdings Inc., a state-owned company owned by the State of Delaware, United States of America. bar, lounge area, gym club, spa facilities, etc. The company found that respondents were using one hotel in Bangalore and another in Puttaparthi under the name “SAI RENAISSANCE”, which covers the entire source. – a well-known trademark and service mark “RENAISSANCE”.

The complainant submitted that the trademark “RENAISSANCE” had been used by its international hospitality business since 1981 and that it was one of the largest and most prestigious hotel chains in the world and had used the trademark “RENAISSANCE” in India since 1990.

It was argued that respondents copied the trademark “RENAISSANCE”, its stylistic representation, trademarks and cards and pamphlets in a way that promoted affiliation, affiliation, contact or contact with the plaintiff’s business.

A court order barred the defendants to:

• use the “SAI RENAISSANCE” trademark or any other trademark which includes the plaintiff’s trademark “RENAISSANCE” or which is similarly fraudulent.
• from opening, operating, managing, trading, licensing, direct or indirect sales of hotels, restaurants, or hospitality services in any way under the trademark or service mark “RENAISSANCE” or any other fraudulent “RENAISSANCE” mark or any other mark. the same deceptive. which includes online as a domain name or in any other way to provide their services as such or linked to a complaint.

The trial court, however, dismissed the plaintiff’s claim for compensation.

The Karnataka High Court, however, concluded that there was no evidence presented by the plaintiff to show that respondents were abusing the trademark’s advantage or that the use of the word “SAI RENAISSANCE” tarnished the character or reputation of the individual. plaintiff’s trademark.

ISSUE

• Did respondents / defendants violate the complainant / respondent’s trademark “RENAISSANCE”?

LEGAL PROCEDURES

Trademarks Act, 1999:

• Section 29- Violation of registered trademarks.

• Section 30- Restrictions on the operation of a registered trademark.

JUDGEMENT

The High Court initially noted that both the Court of Appeals and the Supreme Court concluded that the trademark / defendant’s trademark was identical to that of the plaintiff / plaintiff and moreover that the services rendered to the defendants / defendants were under the same category, viz. , Class 16 and Class 42. Therefore, the complainant / complainant’s assets will be combined with Section 29 (2) (c) read with Section 29 (3) of the Act.

 The Court further noted that subsection (2) of Section 29 of the said Act deals with cases in which a trademark item is the same or similar and the goods covered by that mark are the same or similar, subsection (4) of Section 29 of the said sign. The Act deals with situations where the trademark is the same, but the goods or services are not the same as those with which the trademark is registered. In addition, it is an indisputable fact that the complainant / complainant’s trademark “RENAISSANCE” was registered in connection with goods and services in Class 16 and Class 42 and the “SAI RENAISSANCE” trademark, which is similar to or similar to the plaintiff / plaintiff’s trademark. , used by defendants / defendants in respect of goods and services similar to those of the plaintiff / plaintiff, noted by the Court. Therefore, it would not have been possible for the Supreme Court to enter into the discussion that the plaintiff / plaintiff’s trademark had a reputation in India and that the use of the trademark without good cause would improperly benefit or harm the registered trademark.

The Court relied on the decision in the case of Ruston & Hornsby Limited v. Zamindara Engineering Co, to conclude that in the case of a violation of the law, if it was found that the plaintiff’s mark resembled the registered plaintiff’s mark, the Court would not have gone. in an investigation into whether the violation of the law may be deceptive or confusing. In the event of an offense, an order will be issued immediately if it is proved that the respondent is abusing the plaintiff’s trademark. The Court further noted that the use of the word “SAI RENAISSANCE” is synonymous with phonetics and appearance as “RENAISSANCE”, and will violate the provisions of subsection (9) of Section 29 of the Act.

The Court further noted that Section 30 (1) of the Act provides that in order to achieve Section 30 of the said Act, two conditions must be met, namely, the use of a trademark with which it is subject to honesty in industrial or commercial matters; or damage to the distinctive character or dignity of a trademark, is required to be fulfilled and subsection (1) of Section 30 means the Act, after subsection (a), the word used is’ and ‘, as in the case of subsection (4) of Section 29 of the said Act, contrary to the word’ or ‘used in subsection (2) of Section. 29 of the said Act, therefore the High Court errs in referring only to the matter set out in subsection (b) of subsection (1) of Section 30 of the Act which ignores the fact that in order to gain subsection (1) of the Section. 30 of the said Act, both conditions had to be fulfilled.

Therefore, the Supreme Court failed to consider the principles of translation and the conditions as set out in the case of Reserve Bank of India v. Peerless General Finance and Investment Co. Ltd. and others. Accordingly, the High Court ruled that the defendants had violated the plaintiff / complainant’s trademark “RENAISSANCE” and consequently set aside the High Court order.

CONCLUSION

The Apex Court in the present case concluded that when the defendant’s trademark is identical to plaintiff’s registered trademark & their goods or services are identical, confusion in public shall be presumed. The same would be in blatant violation of section 29 of the Trade Mark Act, 1999.

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