RENAISSANCE HOTEL HOLDINGS INC v. B. VIJAYA SAI & Ors.

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 appellant- plaintiff and further that the services rendered by the respondents- defendants 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 appellant- plaintiff 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 A B C D E F G H 326 SUPREME COURT REPORTS [2022] 2 S.C.R. 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 appellant- plaintiff’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 appellant- plaintiff cater to different classes of customers and as to whether there was likely to be confusion in the minds of consumers with A B C D E F G H RENAISSANCE HOTEL HOLDINGS INC. v. B. VIJAYA SAI 327 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), A B C D E F G H 328 SUPREME COURT REPORTS [2022] 2 S.C.R. 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 A B C D E F G H RENAISSANCE HOTEL HOLDINGS INC. v. B. VIJAYA SAI 329 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]