# RENAISSANCE HOTEL HOLDINGS INC v. B. VIJAYA SAI AND OTHERS

- **Citation:** [2022] 2 S.C.R. 321
- **Court:** Supreme Court of India
- **Decided:** 2022-01-19
- **Case number:** Civil Appeal No. 404 of 2022
- **Bench:** L. Nageswara Rao, B. R. Gavai, B. V. Nagarathna
- **Source:** https://unisonlegal.in/judgment/supreme-court-of-india/renaissance-hotel-holdings-inc-v-b-vijaya-sai-and-others-35975
- **Pages:** 42

## Headnote

Trade Marks Act, 1999 - s.29(2)(c) r/w s.29(3); ss.29(4), (5),
29(9), 30 - Infringement of trade mark - Mark identical to the
registered trade mark and also used in relation to identical goods/
services - Presumption u/s.29(3) - Appellant filed suit for permanent
injunction to restrain the respondents from using the trade mark
"SAI RENAISSANCE" or any other trade mark identical with their
trade mark "RENAISSANCE" used by it for its hospitality business
throughout the world since 1981 and in India since 1990 -
Respondents restrained inter alia 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, appellant's claim for damages rejected - Order set aside by
High Court - On appeal, held: Appellant's trade mark
"RENAISSANCE" is registered u/Class 16 and Class 42 dealing
with hotels, hotel related services and goods - "SAI RENAISSANCE"
used by the respondents- was also in relation to Class 16 and Class
42 - When the defendant's trade mark is identical with the registered
trade mark of the plaintiff and the goods/services of the defendant
are identical with the goods/services covered by registered trade
mark, the Court shall presume that it is likely to cause confusion on
the part of the public - Trial court rightly held that the goods of the
appellant would be covered by s.29(2)(c) r/w s.29(3) - Use of the
word "RENAISSANCE" by respondents would squarely be hit by
sub-section(5) of s.29 - Further, use of the word "SAI
RENAISSANCE" which is phonetically and visually similar to
"RENAISSANCE", would also be an act of infringement in view of
s.29(9) - High Court also erred in picking up only clause (c) of
s.29(4) without noticing other parts of the said sub-section -
Similarly, while considering the import of sub--section (1) of s.30,
it only picked up clause (b) of s.30(1) ignoring the provisions
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contained in clause (a) of s.30(1) - Order of High Court set aside,
decree of the trial court is maintained - Intellectual Property.
Trade Marks Act, 1999 - s.29(2)(c), 29(3) - Presumption u/
s.29(3) - Held: In case of an eventuality covered u/clause (c) of
sub-section (2) of s.29 in view of the provisions of sub-section (3)
of s.29, the Court shall presume that it is likely to cause confusion
on the part of the public.
Trade Marks Act, 1999 - Passing off and infringement of
registered trade mark - Distinction between - Discussed -
Intellectual Property.
Trade Marks Act, 1999 - s.29(2), 29(4) - Distinction - Held:
While sub-section (2) of s.29 deals with those situations where the
trade mark is identical or similar and the goods covered by such a
trade mark are identical or similar - Sub-section (4) of s.29 deals
with situations where though the trade mark is identical, but the
goods or services are not similar to those for which the trade mark
is registered.
Trade Marks Act, 1999 - s.29(9) - Respondent was using the
mark "SAI RENAISSANCE", appellant claimed infringement of its
registered trade mark "RENAISSANCE" - Held: Sub-section (9) of
s.29 provides that where the distinctive elements of a registered trade
mark consist of or include words, the trade mark may be infringed
by the spoken use of those words as well as by their visual
representation - As such, the use of the word "SAI RENAISSANCE"
which is phonetically and visually similar to "RENAISSANCE",
would also be an act of infringement in view of the provisions of
sub-section (9) of s.29.
Trade Marks Act, 1999 - s.30 - Benefit under, on fulfillment
of twin conditions - Held: To avail benefit of s.30, it is required that
the twin conditions are fulfilled, i.e., the use of the impugned trade
mark being in accordance with the honest practices in industrial or
commercial matters, and that such a use is not such as to take unfair
advantage of or be detrimental to the distinctive character or repute
of the trade mark.
Interpret

## Text

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[2022] 2 S.C.R. 321
321
RENAISSANCE HOTEL HOLDINGS INC.
v.
B. VIJAYA SAI AND OTHERS
(Civil Appeal No. 404 of 2022)
JANUARY 19, 2022
[L. NAGESWARA RAO, B. R. GAVAI AND
B. V. NAGARATHNA, JJ.]
Trade Marks Act, 1999 - s.29(2)(c) r/w s.29(3); ss.29(4), (5),
29(9), 30 - Infringement of trade mark - Mark identical to the
registered trade mark and also used in relation to identical goods/
services - Presumption u/s.29(3) - Appellant filed suit for permanent
injunction to restrain the respondents from using the trade mark
"SAI RENAISSANCE" or any other trade mark identical with their
trade mark "RENAISSANCE" used by it for its hospitality business
throughout the world since 1981 and in India since 1990 -
Respondents restrained inter alia 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, appellant's claim for damages rejected - Order set aside by
High Court - On appeal, held: Appellant's trade mark
"RENAISSANCE" is registered u/Class 16 and Class 42 dealing
with hotels, hotel related services and goods - "SAI RENAISSANCE"
used by the respondents- was also in relation to Class 16 and Class
42 - When the defendant's trade mark is identical with the registered
trade mark of the plaintiff and the goods/services of the defendant
are identical with the goods/services covered by registered trade
mark, the Court shall presume that it is likely to cause confusion on
the part of the public - Trial court rightly held that the goods of the
appellant would be covered by s.29(2)(c) r/w s.29(3) - Use of the
word "RENAISSANCE" by respondents would squarely be hit by
sub-section(5) of s.29 - Further, use of the word "SAI
RENAISSANCE" which is phonetically and visually similar to
"RENAISSANCE", would also be an act of infringement in view of
s.29(9) - High Court also erred in picking up only clause (c) of
s.29(4) without noticing other parts of the said sub-section -
Similarly, while considering the import of sub--section (1) of s.30,
it only picked up clause (b) of s.30(1) ignoring the provisions
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contained in clause (a) of s.30(1) - Order of High Court set aside,
decree of the trial court is maintained - Intellectual Property.
Trade Marks Act, 1999 - s.29(2)(c), 29(3) - Presumption u/
s.29(3) - Held: In case of an eventuality covered u/clause (c) of
sub-section (2) of s.29 in view of the provisions of sub-section (3)
of s.29, the Court shall presume that it is likely to cause confusion
on the part of the public.
Trade Marks Act, 1999 - Passing off and infringement of
registered trade mark - Distinction between - Discussed -
Intellectual Property.
Trade Marks Act, 1999 - s.29(2), 29(4) - Distinction - Held:
While sub-section (2) of s.29 deals with those situations where the
trade mark is identical or similar and the goods covered by such a
trade mark are identical or similar - Sub-section (4) of s.29 deals
with situations where though the trade mark is identical, but the
goods or services are not similar to those for which the trade mark
is registered.
Trade Marks Act, 1999 - s.29(9) - Respondent was using the
mark "SAI RENAISSANCE", appellant claimed infringement of its
registered trade mark "RENAISSANCE" - Held: Sub-section (9) of
s.29 provides that where the distinctive elements of a registered trade
mark consist of or include words, the trade mark may be infringed
by the spoken use of those words as well as by their visual
representation - As such, the use of the word "SAI RENAISSANCE"
which is phonetically and visually similar to "RENAISSANCE",
would also be an act of infringement in view of the provisions of
sub-section (9) of s.29.
Trade Marks Act, 1999 - s.30 - Benefit under, on fulfillment
of twin conditions - Held: To avail benefit of s.30, it is required that
the twin conditions are fulfilled, i.e., the use of the impugned trade
mark being in accordance with the honest practices in industrial or
commercial matters, and that such a use is not such as to take unfair
advantage of or be detrimental to the distinctive character or repute
of the trade mark.
Interpretation of Statutes - Principles of - Textual, contextual
interpretation - Held: While interpreting the provisions of a statute,
it is necessary that the textual interpretation should be matched
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with the contextual one - Further, no part of a statute and no word
of a statute can be construed in isolation - Trade Marks Act, 1999.
Words & Phrases - Trade Marks Act, 1999 - ss.29(2)(a), (b),
29(4)(a), (b) - Use of word 'or' vis-à-vis use of 'and' - Held: While
the legislature has used the word 'or' after clauses (a) and (b) in
sub-section (2) of s.29, it has used the word 'and' after clauses (a)
and (b) in sub-section (4) of s.29 - The legislative intent is very
clear - Insofar as sub-section (2) of s.29 is concerned, it is sufficient
that any of the conditions as provided in clauses (a), (b) or (c) is
satisfied - Whereas, by employing the word "and" after clauses (a)
and (b) in sub-section (4) of s.29, it is clear that unless all the three
conditions are satisfied, it will not be open to the proprietor of the
registered trade mark to sue for infringement when though the
impugned trade mark is identical with the registered trade mark,
but is used in relation to goods or services which are not similar to
those for which the trade mark is registered.
Allowing the appeal, the Court
HELD: 1.1 In all legal proceedings relating to trade mark
registered under the Trade Marks Act, 1999 (the said Act), the
original registration of the trade mark and of all subsequent
assignments and transmissions of the trade mark shall be prima
facie evidence of the validity thereof. The legislative scheme is
clear that when the mark of the defendant is identical with the
registered trade mark of the plaintiff and the goods or services
covered are similar to the ones covered by such registered trade
mark, it may be necessary to prove that it is likely to cause
confusion on the part of the public, or which is likely to have an
association with the registered trade mark. Similarly, when the
trade mark of the plaintiff is similar to the registered trade mark
of the defendant and the goods or services covered by such
registered trade mark are identical or similar to the goods or
services covered by such registered trade mark, it may again be
necessary to establish that it is likely to cause confusion on the
part of the public. However, when the trade mark 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
RENAISSANCE HOTEL HOLDINGS INC. v. B. VIJAYA SAI
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or services covered by registered trade mark, the Court shall
presume that it is likely to cause confusion on the part of the
public. [Paras 42, 43][349-B-F]
1.2 This Court has pointed out the distinction between the
causes of action and right to relief in suits for passing off and for
infringement of registered trade mark. It has been held that the
essentials of a passing off action with those in respect of an action
complaining of an infringement of a registered trade mark, cannot
be equated. It has been held that though an action for passing off
is a Common Law remedy being an action for deceit, that is, a
passing off by a person of his own goods as those of another; the
action for infringement is a statutory right conferred on the
registered proprietor of a registered trade mark for the
vindication of the exclusive rights to the use of the trade mark in
relation to those goods. The use by the defendant of the trade
mark of the plaintiff is a sine qua non in the case of an action for
infringement. It has further been held that if the essential features
of the trade mark of the plaintiff have been adopted by the
defendant, the fact that the get-up, packing and other writing or
marks on the goods or on the packets in which he offers his goods
for sale show marked differences, or indicate clearly a trade origin
different from that of the registered proprietor of the mark, would
be immaterial in a case of infringement of the trade mark, whereas
in the case of a passing off, the defendant may escape liability if
he can show that the added matter is sufficient to distinguish his
goods from those of the plaintiff. The question to be asked in an
infringement action is as to whether the defendant is using a mark
which is same as, or which is a colourable imitation of the plaintiff's
registered trade mark. Though the get up of the defendant's
goods may be so different from the plaintiff's goods and the prices
may also be so different that there would be no probability of
deception of the public, nevertheless even in such cases, i.e., in
an infringement action, an injunction would be issued as soon as
it is proved that the defendant is improperly using the plaintiff's
mark. No case of actual deception nor any actual damage needs
to be proved in such cases. Though two actions are closely similar
in some respects, in an action for infringement, where the
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defendant's trade mark is identical with the plaintiff's trade mark,
the Court will not enquire whether the infringement is such as is
likely to deceive or cause confusion. [Paras 45, 47][351-C-G;
353-B-E]
Ruston & Hornsby Limited v. Zamindara Engineering
Co. (1969) 2 SCC 727 - relied on.
2.1 In the present case, both the trial court and the High
Court have come to the conclusion that the trade mark of the
respondents-defendants is identical with that of the appellantplaintiff and further that the services rendered by the respondentsdefendants are under the same class, i.e., Class 16 and Class 42,
in respect of which the appellant-plaintiff's trade mark
"RENAISSANCE" was registered. In such circumstances, the
trial court had rightly held that the goods of the appellant-plaintiff
would be covered by Section 29(2)(c) read with Section 29(3) of
the said Act. However, the High Court, while reversing the decree
of injunction granted by the trial court, has held that the appellantplaintiff had failed to establish that the trade mark has reputation
in India and that the respondents-defendants' use thereof was
honest and further that there was no confusion likely to be created
in the minds of the consumers inasmuch as the class of consumers
was totally different. It appears that the High Court has relied
only on clause (c) of sub-section (4) of Section 29 of the said Act
to arrive at such a conclusion. The High Court has totally erred
in taking into consideration only clause (c) of sub-section (4) of
Section 29 of the said Act. It is to be noted that, whereas, the
legislature has used the word 'or' after clauses (a) and (b) in
sub-section (2) of Section 29 of the said Act, it has used the word
'and' after clauses (a) and (b) in sub-section (4) of Section 29 of
the said Act. It could thus be seen that the legislative intent is
very clear. Insofar as sub-section (2) of Section 29 of the said Act
is concerned, it is sufficient that any of the conditions as provided
in clauses (a), (b) or (c) is satisfied. It is further clear that in case
of an eventuality covered under clause (c) of sub-section (2) of
Section 29 in view of the provisions of sub-section (3) of Section
29 of the said Act, the Court shall presume that it is likely to
cause confusion on the part of the public. The perusal of
sub-section (4) of Section 29 of the said Act would reveal that the
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same deals with an eventuality when the impugned trade mark is
identical with or similar to the registered trade mark and is used
in relation to goods or services which are not similar to those for
which the trade mark is registered. Only in such an eventuality,
it will be necessary to establish that the registered trade mark
has a reputation in India and the use of the mark without due
cause takes unfair advantage of or is detrimental to, the distinctive
character or repute of the registered trade mark. The legislative
intent is clear by employing the word "and" after clauses (a) and
(b) in sub-section (4) of Section 29 of the said Act. Unless all the
three conditions are satisfied, it will not be open to the proprietor
of the registered trade mark to sue for infringement when though
the impugned trade mark is identical with the registered trade
mark, but is used in relation to goods or services which are not
similar to those for which the trade mark is registered. To sum
up, while sub-section (2) of Section 29 of the said Act deals with
those situations where the trade mark is identical or similar and
the goods covered by such a trade mark are identical or similar,
sub-section (4) of Section 29 of the said Act deals with situations
where though the trade mark is identical, but the goods or
services are not similar to those for which the trade mark is
registered. [Paras 48-52][353-E-H; 354-A-G]
2.2 Undisputedly, the appellant-plaintiff'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-plaintiff's trade
mark, was being used by the respondents-defendants in relation
to the goods and services similar to that of the appellant-plaintiff's.
In these circumstances, it was not open for the High Court to
have entered into the discussion as to whether the appellantplaintiff's trade mark had a reputation in India and the use of the
mark without due cause takes unfair advantage of or is detrimental
to, the distinctive character or repute of the registered trade
mark. The High Court has erred in entering into the discussion
as to whether the respondents-defendants and the appellantplaintiff cater to different classes of customers and as to whether
there was likely to be confusion in the minds of consumers with
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regard to the hotel of the respondents-defendants belonging to
the same group as of the appellant-plaintiff's. in an action for
infringement, once it is found that the defendant's trade mark
was identical with the plaintiff's registered trade mark, the Court
could not have go into an enquiry whether the infringement is
such as is likely to deceive or cause confusion. In an infringement
action, an injunction would be issued as soon as it is proved that
the defendant is improperly using the trade mark of the plaintiff.
[Paras 53, 54][354-G-H; 355-A-D]
2.3 It is not in dispute that the appellant-plaintiff's trade
mark "RENAISSANCE" is registered under Class 16 and Class
42, which deals with hotels and hotel related services and goods.
It is also not in dispute that the mark and the business name
"SAI RENAISSANCE", which was being used by the
respondents-defendants, was also in relation to Class 16 and Class
42. As such, the use of the word "RENAISSANCE" by the
respondents-defendants as a part of their trade name or business
concern, would squarely be hit by sub-section (5) of Section 29 of
the said Act. It is further to be noted that the words
"RENAISSANCE" and "SAI RENAISSANCE" are phonetically
as well as visually similar. Sub-section (9) of Section 29 of the
said Act provides that where the distinctive elements of a
registered trade mark consist of or include words, the trade mark
may be infringed by the spoken use of those words as well as by
their visual representation. As such, the use of the word "SAI
RENAISSANCE" which is phonetically and visually similar to
"RENAISSANCE", would also be an act of infringement in view
of the provisions of sub-section (9) of Section 29 of the said Act.
Further, the High Court has relied on Section 30(1)(b) of the said
Act. The perusal of Section 30(1) of the said Act would reveal
that for availing the benefit of Section 30 of the said Act, it is
required that the twin conditions, i.e., the use of the impugned
trade mark being in accordance with the honest practices in
industrial or commercial matters, and that such a use is not such
as to take unfair advantage of or be detrimental to the distinctive
character or repute of the trade mark, are required to be fulfilled.
In sub-section (1) of Section 30 of the said Act, after clause (a),
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the word used is 'and', like the one used in sub-section (4) of
Section 29 of the said Act, in contradistinction to the word 'or'
used in sub-section (2) of Section 29 of the said Act. The High
Court has referred only to the condition stipulated in clause (b)
of sub-section (1) of Section 30 of the said Act ignoring the fact
that, to get the benefit of sub-section (1) of Section 30 of the said
Act, both the conditions had to be fulfilled. Unless it is established
that such a use 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 under Section
30(1) of the said Act. As such, the finding in this regard by the
High Court is also erroneous. [Paras 55-57, 59][355-E-H;
356-A; 356-E-H; 357-A]
2.4 The High Court has failed to take into consideration
two important principles of interpretation. The first one being of
textual and contextual interpretation. While interpreting the
provisions of a statute, it is necessary that the textual
interpretation should be matched with the contextual one. The
Act must be looked at as a whole and it must be discovered what
each section, each clause, each phrase and each word is meant
and designed to say as to fit into the scheme of the entire Act. No
part of a statute and no word of a statute can be construed in
isolation. Statutes have to be construed so that every word has a
place and everything is in its place. The said Act has been enacted
by the legislature taking into consideration the increased
globalization of trade and industry, the need to encourage
investment flows and transfer of technology, and the need for
simplification and harmonization of trade mark management
systems. One of the purposes for which the said Act has been
enacted is prohibiting the use of someone else's trade mark as a
part of the corporate name or the name of business concern. If
the entire scheme of the Act is construed as a whole, it provides
for the rights conferred by registration and the right to sue for
infringement of the registered trade mark by its proprietor. The
legislative scheme as enacted under the said statute elaborately
provides for the eventualities in which a proprietor of the
registered trade mark can bring an action for infringement of the
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trade mark and the limits on effect of the registered trade mark.
By picking up a part of the provisions in sub-section (4) of Section
29 of the said Act and a part of the provision in sub-section (1) of
Section 30 of the said Act and giving it a textual meaning without
considering the context in which the said provisions have to be
construed would not be permissible. The High Court fell in error
in doing so. Another principle that the High Court has failed to
notice is that a part of a section cannot be read in isolation.
Ignoring this principle, the High Court has picked up clause (c)
of sub-section (4) of Section 29 of the said Act in isolation without
even noticing the other provisions contained in the said
sub-section (4) of Section 29 of the said Act. Similarly, again while
considering the import of sub- section (1) of Section 30 of the
said Act, the High Court has only picked up clause (b) of
sub-section (1) of Section 30 of the said Act, ignoring the
provisions contained in clause (a) of the said sub-section (1) of
Section 30 of the said Act. [Paras 60-63][357-A-B, G-H;
358-A-E; 359-A-B]
Reserve Bank of India v. Peerless General Finance and
Investment Co. Ltd. and Others (1987) 1 SCC 424 :
[1987] 2 SCR 1; Balasinor Nagrik Cooperative Bank
Ltd. v. Babubhai Shankerlal Pandya and Others (1987)
1 SCC 606; Kalawatibai v. Soiryabai and Others (1991)
3 SCC 410 : [1991] 2 SCR 599 - relied on.
2.5 The High Court fell in error on various counts. The
present case stood squarely covered by the provisions of Section
29(2)(c) read with sub-section (3) of Section 29 of the said Act.
The present case also stood covered under sub-sections (5) and
(9) of Section 29 of the said Act. The High Court has erred in
taking into consideration clause (c) of sub-section (4) of Section
29 of the said Act in isolation without noticing other parts of the
said sub-section (4) of Section 29 of the said Act and the import
thereof. 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
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honest practices in industrial or commercial matters. The High
Court was not justified in interfering with the well-reasoned order
of the trial court. The High Court fell in error by interfering with
the well-reasoned order of the trial court. The impugned judgment
and order passed by the High Court is quashed and set aside.
The judgement and decree passed by the trial court is maintained.
[Paras 71-73][361-F-H; 362-A-D]
Khoday Distilleries Limited (Now known as Khoday
India Limited) v. Scotch Whisky Association and Other
(2008) 10 SCC 723: [2008] 9 SCR 975; Nandhini
Deluxe v. Karnataka Cooperative Milk Producers
Federation Limited (2018) 9 SCC 183: [2018] 11 SCR
275; Neon Laboratories Limited v. Medical Technologies
Limited and Others (2016) 2 SCC 672: [2015] 10 SCR
684 - held inapplicable.
Kaviraj Pandit Durga Dutt Sharma v. Navaratna
Pharmaceutical Laboratories [1965] 1 SCR 737 -
relied on.
Midas Hygiene Industries (P) Limited and Another v.
Sudhir Bhatia and Others (2004) 3 SCC 90 - explained.
M/s The RENAISSANCE, Cochin v. M/s RENAISSANCE
Hotels Inc. Marriotr Decision of Kerala High Court dtd.
28.04.2009 in RFA No. 235 of 2008; Laxmikant V. Patel
v. Chetanbhai Shah and Another (2002) 3 SCC 65:
[2001] 5 Suppl. SCR 435; Corn Products Refining Co.
v. Shangrila Food Products Limited [1960] 1 SCR 968
- referred to.
Case Law Reference
[2001] 5 Suppl. SCR 435
referred to
 Para 17
(1969) 2 SCC 727
relied on
 Para 18
[1965] 1 SCR 737
relied on
 Para 19
(2004) 3 SCC 90
held inapplicable
 Para 20
[2008] 9 SCR 975
held inapplicable
 Para 23
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[2018] 11 SCR 275
held inapplicable
 Para 23
[1960] 1 SCR 968
referred to
 Para 23
[2015] 10 SCR 684
held inapplicable
 Para 23
[1987] 2 SCR 1
relied on
Para 60
(1987) 1 SCC 606
relied on
 Para 62
[1991] 2 SCR 599
relied on
Para 62
CIVIL APPELLATE JURISDICTION: Civil Appeal No. 404 of
2022.
From the Judgment and Order dated 12.04.2019 of the High Court
of Karnataka at Bengaluru in Regular First Appeal No.1462 of 2012
(IPR).
K. V. Vishwanathan, Sr. Adv., Pravin Anand, Ms. Vaishali Mittal,
Vikas Singh Jangra, Siddhant Chamola, Souradeep Mukhopadhyay, Advs.
for the Appellant.
B. C. Sitarama Rao, N. K. Verma, Ms. Anjana Chandrashekar,
Advs. for the Respondents.
The Judgment of the Court was delivered by
B. R. GAVAI, J.
1. Leave granted.
2. This appeal challenges the judgment and order dated 12th April
2019 passed by the Single Judge of the High Court of Karnataka at
Bengaluru in Regular First Appeal No. 1462 of 2012, thereby allowing
the appeal filed by the respondents-defendants herein and setting aside
the judgement and decree of the Principal District Judge, Bangalore
Rural District, Bangalore (hereinafter referred to as the "trial court"),
dated 21st June 2012 passed in O.S. No. 3 of 2009, in favour of the
appellant-plaintiff herein.
3. The facts in brief giving rise to the filing of the present appeal
are as under:
The appellant-plaintiff filed a suit being O.S. No. 3 of 2009 before
the trial court claiming a decree of permanent injunction to restrain the
respondents-defendants from using the trade mark "SAI RENAISSANCE"
or any other trade mark identical with the appellant-plaintiff's trade mark
RENAISSANCE HOTEL HOLDINGS INC. v. B. VIJAYA SAI
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"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
impugned mark "SAI RENAISSANCE" or "RENAISSANCE" and for
damages amounting to Rs.3,50,000/- for having used its trade mark.
4. It is the case of the appellant-plaintiff that it is a company
incorporated under the laws of the State of Delaware, United States of
America. It is the further case of the appellant-plaintiff that it is the
holder and proprietor of the trade mark and service mark
"RENAISSANCE" in relation to hotel, restaurant, catering, bar, cocktail
lounge, fitness club, spa services, etc. It is the further case of the appellantplaintiff that the trade mark "RENAISSANCE" has also been used in
relation to a wide variety of goods commonly found in the appellantplaintiff's hotels such as bath robes, slippers, shirts, hats, matchboxes,
writing paper, candies, etc. These products are imprinted with the
appellant-plaintiff's trade mark "RENAISSANCE". It is the case of the
appellant-plaintiff that the trade mark "RENAISSANCE" has been used
by it for its hospitality business throughout the world since the year 1981.
That it is one of the world's largest and leading chains of hotels. That it
is using the trade mark "RENAISSANCE" in India since 1990. It is the
case of the appellant-plaintiff that it also runs a hotel and convention
centre in Mumbai and in Goa. That it also owns a registration for the
domain name www.renaissancehotels.com and spends about US$ 14
million annually for worldwide advertisements and promotional activities.
5. It is the further case of the appellant-plaintiff that it has the
registration for the trade mark and service mark "RENAISSANCE" in
India, under Registration No. 610567 in Class 16 for "printed matter,
periodicals, books, stationery, manuals, magazines, instructional and
teaching materials and office requisites" and Registration No. 1241271
in Class 42 for "hotel, restaurant, catering, bar and cocktail lounge
services, provisions of facilities for meetings, conferences and exhibitions,
reservation services for hotel accommodations", respectively.
6. According to the appellant-plaintiff, it came across a website at
www.sairenaissance.com through which it discovered that the
respondents-defendants were operating one hotel in Bangalore and
another one in Puttaparthi under the impugned name "SAI
RENAISSANCE", which wholly incorporates the appellant-plaintiff's
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well-known trade mark and service mark "RENAISSANCE". The
appellant-plaintiff immediately instructed that an investigation be carried
out and sought legal advice with regard to the violation of its intellectual
property. Upon investigation, it was revealed that the respondentsdefendants were running one hotel at Kadugodi, near Whitefield Railway
Station, Bangalore and another one at By-Pass Road, Puttaparthi. It
was further revealed that the respondents-defendants were copying
appellant-plaintiff's trade mark "RENAISSANCE", its stylized
representation, signage and business cards and leaflets. It is the case of
the appellant-plaintiff that this was done in such a manner so as to suggest
an affiliation, association, nexus or connection with the business of the
appellant-plaintiff. The appellant-plaintiff, therefore, claimed infringement
of its registered trade mark "RENAISSANCE" in Class 16 and Class
42. The appellant-plaintiff further contended that a similar suit instituted
by it at Kochi being C.S. No. 5 of 2005 before the District Court at
Ernakulam was decreed in its favour vide judgment dated 31st January
2008.
7. The respondents-defendants resisted the claim of the appellantplaintiff by filing their written statement. It was contended that the suit
was liable to be dismissed on account of delay, laches and acquiescence.
It was further 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 appellantplaintiff. It is the case of the respondents-defendants that they are ardent
devotees of Sri Shirdi Sai Baba and Sri Puttaparthi Sai Baba. It is the
belief of all the devotees of Sri Sai Baba including the first respondentdefendant that Sri Puttaparthi Sai Baba is the reincarnation of Sri Shirdi
Sai Baba and therefore, the first respondent-defendant used the dictionary
word "RENAISSANCE" after the name of Sri Shirdi Sai Baba and
adopted the name "SAI RENAISSANCE". It is the case of the first
respondent-defendant that he has been running the hotel for the last 15
years. According to the first respondent-defendant, the hotel at Kadugodi
near Whitefield was established in the year 2001 near the Ashram of Sri
Sai Baba. It is the case of the first respondent-defendant that the hotel
was established so as to provide facilities to the devotees of Sri Sai
Baba. The respondents-defendants further submitted that even the first
respondent-defendant was not aware that the appellant-plaintiff had
established any such hotel by incorporating the word "RENAISSANCE"
in its name till he received suit summons in the said case.
RENAISSANCE HOTEL HOLDINGS INC. v. B. VIJAYA SAI
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8. It is contended by the respondents-defendants that the word
"RENAISSANCE" is commonly found in the dictionary and is used by
a large number of people and therefore, the trade mark
"RENAISSANCE" has not become distinctive with the appellant-plaintiff
as claimed by it. It is submitted by the respondents-defendants that
"RENAISSANCE" is neither a coined word nor an inventive mark. It is
further the case of the respondents-defendants that the appellantplaintiff's mark "RENAISSANCE" registered under Class 42 is subject
to rectification proceedings, and as such, the appellant-plaintiff cannot
claim that they are the registered proprietors of the said trade mark
"RENAISSANCE".
9. It is the further case of the respondents-defendants that the
class of customers to which they were catering was totally different
from the class of customers to which the appellant-plaintiff was catering.
It is their case that the services provided by them and the appellantplaintiff were also totally different. It was contended that the respondentsdefendants did not provide non-vegetarian food and alcoholic drinks to
its customers. It was therefore contended that there was no possibility
of confusion being created in the minds of the customers that the hotel
of the respondents-defendants belonged to or was affiliated to the
appellant-plaintiff.
10. The trial court framed the following issues:
"1.
Whether the Plaintiff is the registered proprietor of the trade
mark/service mark "RENAISSANCE" under the Trade
Mark Act 1999?
2.
Whether the plaintiff is the proprietor of trade mark/service
mark "Renaissance" on account of prior adoption and use
in relation to hotels and hospitality business?
3.
Whether the plaintiff proves that the defendant is infringing
the trade mark of the plaintiff?
4.
Whether the plaintiff proves that the action of defendant is
one of passing off?
5.
Whether the plaintiff is entitled to an order for delivery of
goods, labels or any other printed materials?
6.
Whether plaintiff is entitled for rendition of accounts and
damages?
7.
To what reliefs and decree the parties are entitled for?
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Additional Issues
1.
Whether the suit is not maintainable for want of signing
and verification of the plaint by person having locus standi?
2.
Whether the defendants prove that they have been honestly
and continuously using the trade mark Hotel
SAIRenaissance?"
11. The trial court answered the aforesaid issues as under:
"12. My answer to the above issues are as under:
Issue No.1:
Affirmative
Issue No.2:
Affirmative
Issue No.3:
Affirmative
Issue No.4:
Negative
Issue No.5:
Negative
Issue No.6:
negative
Additional Issue No.1:
Affirmative
Additional Issue No.2:
does not arise for consideration"
12. The trial court after considering the evidence on record and
contentions raised on behalf of the parties, partly decreed the suit by
restraining the respondents-defendants from using the trade mark "SAI
RENAISSANCE" or any other trade mark which incorporates the
appellant-plaintiff's trade mark "RENAISSANCE" or is deceptively
similar thereto in relation to or upon printed matter, periodicals, books,
instructional and teaching materials, stationery, manuals, magazines and
office requisites amounting to infringement of the appellant-plaintiff's
registered trade mark No. 610567 in Class 16 and for hotel, restaurant,
catering, bar and cocktail lounge services, provision of facilities for
meetings, conferences and exhibitions, reservation services for hotel
accommodations amounting to infringement of the appellant-plaintiff's
registered trade mark No. 1241271 in Class 42. The trial court further
restrained the respondents-defendants from opening, operating,
managing, franchising, licensing, dealing directly or indirectly in hotels,
restaurant, or hospitality services of any manner under the trade mark
or service mark "RENAISSANCE" or any deceptively similar mark
"RENAISSANCE" or any deceptively similar mark including on the
RENAISSANCE HOTEL HOLDINGS INC. v. B. VIJAYA SAI
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internet as a domain name www.sairenaissance.com or in any manner
so as to pass off their services as those of or concocted with the appellantplaintiff. The trial court, however, rejected the claim of the appellantplaintiff for damages. Being aggrieved thereby, the respondentsdefendants appealed before the High Court.
13. The High Court observed that the evidence produced by the
appellant-plaintiff did not disclose that a trans-border reputation was
earned by it to uphold its plea in that regard. The High Court further
observed that the appellant-plaintiff is a 5 Star hotel but the respondentsdefendants' hotel is not of that standard. The High Court further observed
that no evidence was produced by the appellant-plaintiff to show that
the respondents-defendants 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 appellantplaintiff's trade mark.
14. Insofar as the judgment of the Kerala High Court in the case
of M/s The RENAISSANCE, Cochin v. M/s RENAISSANCE Hotels
Inc. Marriotr1 in which injunction was granted in favour of the plaintiff
against the Hotel (RENAISSANCE, COCHIN) is concerned, the High
Court observed that the said judgment was not applicable to the facts of
the present case. It was observed that in the said case, one of the
customers had claimed that he was misled to believe that "The
RENAISSANCE, COCHIN" was a part of the plaintiff's hotel chain
and therefore, he resided there. The High Court observed that in the
present case, none of the customers had made such a claim. It further
observed that the witness of the appellant-plaintiff had admitted that the
respondents-defendants serve only vegetarian food without liquor and
that he had no idea that the respondents-defendants had established two
hotels exclusively for serving the devotees of Satya Sai Baba at
Puttaparthi and Bengaluru, respectively. The High Court further observed
that the evidence on record shows that the respondents-defendants have
not taken unfair advantage, or that its existence was detrimental to the
distinctive character or reputation of the appellant-plaintiff's trade mark.
The High Court, therefore, observed that there was no infringement of
trade mark, and as such, allowed the appeal filed by the respondentsdefendants herein by setting aside the judgement and decree dated 21st
1 RFA No. 235 of 2008 dated 28th April, 2009
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June 2012 passed by the trial court and dismissed the suit. Being aggrieved
thereby, the appellant-plaintiff has approached this Court.
15. We have heard Shri K.V. Viswanathan, learned Senior Counsel
appearing on behalf of the appellant-plaintiff and Shri B.C. Sitarama
Rao, learned counsel appearing on behalf of the respondents-defendants.
16. Shri Viswanathan submitted that the test under Sections 29(1),
29(2) and 29(3) of the Trade Marks Act, 1999 (hereinafter referred to
as the "said Act") would be applicable in the present case, where the
class of goods or services is identical or similar. He submitted that,
however, the High Court has grossly erred in applying the test as provided
under Section 29(4) of the said Act. The learned Senior Counsel submitted
that the High Court has further erred in only referring to the condition
stipulated in clause (c) of Section 29(4) of the said Act. He submitted
that Section 29(4) of the said Act would be applicable only if all the three
conditions specified therein are satisfied. The learned Senior Counsel
further submitted that the High Court has also failed to take into
consideration that since the respondents-defendants were using the
appellant-plaintiff's registered trade mark "RENAISSANCE" as a part
of their trade name for the hotels and as a part of the name of their
business concern, it squarely falls under sub-section (5) of Section 29 of
the said Act and therefore, the respondents-defendants were liable for
infringement of registered trade mark.
17. Shri Viswanathan further submitted that merely because the
respondents-defendants were using the prefix "SAI" before the
registered trade mark of the appellant-plaintiff, it would not save them
from an action for infringement of the registered trade mark. He further
submitted that the High Court, even after observing that the appellantplaintiff was a prior user and registered proprietor in respect of the mark
"RENAISSANCE" and having held that the respondents-defendants
had adopted and had been using the registered trade mark of the appellantplaintiff "RENAISSANCE" along with the prefix "SAI" and that both
of them are in the hotels and hospitality business, has totally erred in
holding that there was no infringement of the appellant-plaintiff's trade
mark. The learned Senior Counsel in support of this proposition, relies
on the judgment of this Court in the case of Laxmikant V. Patel v.
Chetanbhai Shah and Another2.
2 (2002) 3 SCC 65
RENAISSANCE HOTEL HOLDINGS INC. v. B. VIJAYA SAI
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18. Shri Viswanathan further submitted that the test of deception
or confusion has been wrongly applied by the High Court inasmuch as,
in an action for infringement, where the respondents-defendants' trade
mark is identical with the appellant-plaintiff's trade mark, such a test
would not be applicable. In support of this proposition, he relies on the
judgment of this Court in the case of Ruston & Hornsby Limited v.
Zamindara Engineering Co.3.
19.