Renaissance Hotel Holdings Inc. vs. B. Vijay Sai and Ors.

Introduction

The Respondents were sued by the Appellant, the owner and holder of the trademark “RENAISSANCE,” seeking a permanent injunction against the use of the allegedly infringing trademark “SAI RENAISSANCE” and any other marks that are confusingly similar to the Respondents’ mark, “RENAISSANCE.” The Appellant learned that the Respondents were operating two hotels in Bangalore and Puttaparthi, noting that they had imitated their design, signage, and use of the phrase “RENAISSANCE.”

The Respondents refuted the allegation by arguing that the word “RENAISSANCE” was a generic phrase that was frequently used and that the Appellant had not developed a reputation for using it. Moreover, the Respondents claimed to be unaware of the Appellant’s use of the mark. The Trial Court determined that the Respondents’ mark was being violated and ordered an injunction to stop the Respondents from using it, but it rejected the Appellant’s request for damages.

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The Respondents appealed the judgement of the lower court to the High Court. The High Court noted that the Appellant failed to present any evidence of the repute of its mark on a global scale, of any harm done to the mark’s distinctiveness or reputation, or of any unfair advantage gained by the Respondents. The appeal was granted by the High Court since it did not find any violations. The Appellant addressed the Supreme Court after becoming incensed over the same.

Since roughly 1981, according to the plaintiff, the trade mark has been used internationally. The Plaintiff’s first registration in India dates back to the year 1993 in Class 16, and the Plaintiff claimed to have been utilising and holding registration rights for the Trade Mark since October 2003 for the hospitality industry (class 42). The Plaintiff argued, among other things, that: I the Trade Marks Act of 1999 (“Act”), which states that infringement occurs when the defendant’s mark and services are the same as or similar to the plaintiff’s mark and services, applied to its case. In fact, there is a statutory presumption of probability of confusion under Section 29(3) of the Act in cases where the competing marks and services are identical; the High Court incorrectly construed Section 29(4)(c) of the Act in denying an injunction. The High Court did not consider Section 29(5) of the Act, which provides for infringement when a defendant uses the infringing mark also as part of its trade name, and the Defendants were using the Impugned Mark as their hotel name. In such a situation, there is a higher threshold upon a plaintiff to prove reputation in its mark. Section 29(4) of the Act is attracted when rival marks are identical or similar but the rival goods or services are not similar.

In response, the Defendant inter alia contended that: (i) the term ‘Renaissance’ is a generic English word and Plaintiff cannot claim monopoly over the same; (ii) the suit suffered from delay, laches and acquiescence as the Defendants were using the Impugned Mark since 2001 and the suit was filed after a long time gap of around eight years; (iii) use of the Impugned Mark amounted to honest concurrent use under Section 12 of the Act; and (iv) the class of customers catered by the parties was different.

Decision

The Supreme Court went over the Act’s overall structure as well as the pertinent legal precedents. The Supreme Court noted that there was a presumption of probability of confusion under Section 29(3) of the Act because the impugned mark was identical to the trade mark and was being used in connection with identical services. The Supreme Court further observed that the High Court erroneously relied upon Section 29(4)(c) of the Act standalone without taking into consideration sub-clauses (a) and (b) of Section 29(4) of the Act which makes it clear that Section 29(4) of the Act is applicable only when the rival goods / services are different. Referring to the High Court’s reliance on Section 30(1)(b) of the Act, to hold that the Plaintiff did not show that the Impugned Mark took unfair advantage of or was detrimental to the distinctive character or repute of the Trade Mark, the Supreme Court observed that the High Court again erred by failing to consider the import of Section 30(1)(a) of the Act which provides for an exemption from infringement if the defendant’s use of a mark is in accordance with honest practices which is not true in the facts of this case. The Supreme Court reaffirmed the fundamental principle of statutory interpretation, according to which all subclauses should be taken into account collectively rather than separately if they are separated by the word “and” rather than “or.” In addition, the Supreme Court noted that using the contested mark as a trade name would directly violate Section 29(5) of the Act.

Given the foregoing, the Supreme Court set aside the HC Order.

Conclusion

The Judgment provides a helpful guide to the Act’s structure and the purposeful application of its provisions. The Decision correctly relies on Section 29(3) of the Act, a rarely used provision that establishes a statutory presumption that when a defendant uses an identical mark in connection with identical services, the plaintiff does not need to demonstrate that the defendant’s infringement of the plaintiff’s rights is likely to confuse the public because such likelihood of confusion shall be presumed to have occurred. It might be challenging for a brand owner to provide evidence of market confusion. A lawsuit trial takes a lot of time as well. Therefore, the Decision would aid brand owners in obtaining quick injunctive reliefs in cases of such blatant infringements.

Author: Tanya Saraswat, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.

References

• Sakshi Shairwal, Legal understanding in the case of Renainssance Hotel Holding Inc vs Vijaya Sai and Ors. Lexology (2022), https://www.lexology.com/library/detail.aspx?g=8c5f098c-f988-4677-b358-3dc3b097de46 (last visited Feb 28, 2023).
• SpicyIP, Clarifying or confusing the quandary of identical marks: Renaissance Hotel Holdings Inc. v. Vijaya Sai and others SpicyIP (2022), https://spicyip.com/2022/03/clarifying-or-confusing-the-quandry-of-identical-marks-renaissance-hotel-holdings-inc-v-vijaya-sai-and-others.html (last visited Feb 28, 2023).