Apex Court grants relief to Renaissance Hotel in trademark infringement case; says use of ‘SAI RENAISSANCE’ which is phonetically & visually similar to ‘RENAISSANCE’, amounts to infringement

Read Judgment: Renaissance Hotel Holdings Inc. V. B. Vijaya Sai & Others  

Pankaj Bajpai

New Delhi, January 20, 2022: Noticing that the use of the word “SAI RENAISSANCE” which is phonetically and visually similar to “RENAISSANCE”, and also falls under same class of business, would be an act of infringement in view of sub-section (5) & (9) of Section 29 of the Trademark Act, 1999, the Supreme Court has upheld the decree passed by Trial court in restraining the defendants from using the trade mark “SAI RENAISSANCE” which incorporates the plaintiff’s trade mark “RENAISSANCE”. 

A Larger Bench of Justice L. Nageswara Rao, Justice B.R Gavai and Justice B.V Nagarathna observed that unless it is established that a use of trademark 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 u/s 30(1) of the said Act.

Going by the background of the case, Renaissance Hotel Holdings (Appellant-plaintiff) filed a suit before the trial court claiming a decree of permanent injunction to restrain B. Vijaya Sai (Respondents-defendants) from using the trade mark “SAI RENAISSANCE” or any other trade mark identical with the appellant’s trade mark “RENAISSANCE”, and from opening, operating, managing, franchising, licensing, dealing directly or indirectly in hotels, restaurant or hospitality services of any manner under the trade mark “RENAISSANCE”, and to deliver all the goods, label or any other printed material bearing the mark “SAI RENAISSANCE” or “RENAISSANCE” and for damages amounting to Rs.3,50,000/- for having used its trade mark. 

The respondents resisted the claim of the appellant and contended that “RENAISSANCE” is a generic word and no such exclusive rights can be claimed over it in India as it is neither a well-known mark, nor it has any reputation built up by the appellant. It was the case of first respondent that he has been running the hotel for the last 15 years so as to provide facilities to the devotees of Sai Baba. The respondents further submitted that even they were not aware that the appellant had established any such hotel by incorporating the word “RENAISSANCE” in its name till he received suit summons in the said case. 

The trial court partly decreed the suit by restraining the respondents from using the trade mark “SAI RENAISSANCE” or any other trade mark which incorporates the appellant’s trade mark “RENAISSANCE” or is deceptively similar thereto. The trial court, however, rejected the claim of the appellant for damages. On appeal, the High Court observed 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. The High Court therefore held that there was no infringement of trade mark, and as such, allowed the appeal by setting aside the decree passed by the trial court. Hence present appeal. 

After considering the submissions, the Larger Bench noted that when the trademark of the defendant is identical with the registered trade mark of the plaintiff and that the goods or services of the defendant are identical with the goods or services covered by registered trade mark, the Court shall presume that it is likely to cause confusion on the part of the public. 

In the present case, both the trial court and the High Court have come to the conclusion that the trade mark of the respondents is identical with that of the appellant and further that the services rendered by the respondents are under the same class, in respect of which the appellant’s trade mark “RENAISSANCE” was registered, added the Bench. 

In such circumstances, the Apex Court opined that the trial court had rightly held that the goods of the appellant would be covered by Section 29(2)(c) r/w/s 29(3) of the said Act. 

Speaking for the Bench, Justice Gavai found that the appellant’s trade mark “RENAISSANCE” is registered in relation to goods and services in Class 16 and Class 42 and the mark “SAI RENAISSANCE”, which is identical or similar to that of the appellant’s trade mark, was being used by the respondents in relation to the goods and services similar to that of the appellant’s. 

The Larger Bench therefore concluded that 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 trade mark 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.

Accordingly, the Top Court allowed the appeal.