Renaissance vs. Sai Renaissance for Identical Services: Supreme Court Grants Injunction
In Renaissance Hotel Holdings Inc. v. B. Vijaya Sai et al., Civil Appeal No. 404 of 2022 (Appeal), the Honorable Supreme Court of India (the “Supreme Court”) rendered a judgment dated January 19, 2022 (“Decision”) pronouncing an injunction against the use of the trademark ‘SAI RENAISSANCE’ (“Contested mark”) being identical to the brand ‘RENAISSANCE’ (“Trademark”).
In 2009, Renaissance Hotel Holdings Inc (“Applicant”) being the registered owner (inter alia in class 42 relating to hospitality services) of the mark, brought an action for trademark infringement against B. Vijaya Sai and others (“Defendants”) in Bangalore District Court (“Court of First Instance“), for preventing defendants from using the challenged mark in connection with identical hospitality services and other remedies.
The court of first instance issued an order dated June 21, 2012 (“Trial court order”) partially decreed the lawsuit in favor of the plaintiff by granting a permanent injunction and denying any damages. The defendant challenged the trial court’s order in the Karnataka High Court (“Supreme Court”).
The High Court issued its order of 12 April 2019 (“HC Ordinance”) set aside the trial court’s order, inter alia, on the ground that the plaintiff: (i) failed to disclose the cross-border reputation it has acquired; (ii) failed to demonstrate that the defendants were improperly taking advantage of the mark; and (iii) the parties catered to different customer groups, etc. The plaintiff challenged the HC order in the Supreme Court.
The applicant claimed to have used the mark internationally since about 1981. In India, the first registration of the applicant was in 1993 in class 16 and for hotels (belonging to class 42) the applicant claimed to use and have had the right of registration for the mark since October 2003. The plaintiff argued in particular that: (i) his case was fully covered by sections 29(1), (2) and (3) of the Trademarks Act 1999; marks (“Law”) which provides that in the event that the mark and services of the defendant are identical / similar to the mark and services of the plaintiff, it amounts to an infringement. Indeed, under article 29, paragraph 3, of the law, in the event that the competing marks and services are identical, there is a legal presumption of likelihood of confusion; (ii) the High Court wrongly applied section 29(4)(c) of the Act in refusing the injunction. Section 29(4) of the Act applies where rival marks are identical/similar but the rival goods/services are not similar and in such a situation there is a higher threshold for a claimant to prove its brand reputation; and (iii) the High Court failed to consider Section 29(5) of the Act which provides for infringement where a defendant uses the infringing mark also as part of its trade name, and the defendants were using the disputed mark as the name of their hotel.
In response, the defendant argued, inter alia, that: (i) the term “Renaissance” is a generic English word and that the plaintiff cannot claim a monopoly over it; (ii) the lawsuit suffered from delays, failures and acquiescence because the defendants had been using the contested mark since 2001 and the lawsuit was filed after a long period of approximately eight years; (iii) the use of the challenged Mark amounted to honest competing use within the meaning of section 12 of the Act; and (iv) the class of customers served by the parties was different.
Conclusions and decision
The Supreme Court reviewed the entire scheme of the law as well as the relevant legal precedents. The Supreme Court observed that the contested mark was identical to the mark and was used in connection with identical services, and that there was therefore a presumption of likelihood of confusion pursuant to section 29(3) of the Act. The Supreme Court further observed that the High Court had erroneously relied on Section 29(4)(c) of the Act without regard to sub-paragraphs (a) and (b) of Section 29 (4) of the Act, which makes it clear that Section 29(4) of the Act is only applicable where the rival goods/services are different. Referring to the fact that the High Court relied on Section 30(1)(b) of the Act to find that the plaintiff failed to show that the contested mark took unfair advantage of the distinctive character or reputation of the mark or prejudiced it, the Supreme Court observed that the High Court had again erred in disregarding the significance of section 30(1)(a) of the Act, which provides an exemption from infringement if the defendant’s use of a mark is in accordance with honest practices which are not true in the facts of this case. The Supreme Court reiterated the basic principle of statutory interpretation 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 autonomous. The Supreme Court further observed that the use of the contested mark as a trade name would fall squarely within section 29(5) of the Act.
Based on the foregoing, the Supreme Court overturned the HC’s order.
The decision is a welcome treatise on the economy of the law and the purposive interpretation of statutory provisions. The decision rightly relies on Article 29(3) of the Act, which is not an often used provision which establishes a legal presumption that where a defendant uses an identical mark in connection with identical services, the plaintiff does not have to show that the defendant’s act of infringement is likely to cause confusion in the mind of the public, and this likelihood of confusion is presumed to have occurred. It is often difficult for a brand owner to prove confusion in the marketplace with evidence. Moreover, a trial in trial is a time-consuming affair. Therefore, the ruling would help trademark owners quickly obtain injunctions for such egregious infringements.
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