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 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 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 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 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 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 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), 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 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 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.
As published in the Supreme Court Reports, Supreme Court of India. Text from the Indian Supreme Court Judgments open data set (Dattam Labs), CC BY 4.0.
This page is for informational and research purposes only and does not constitute legal advice. Consult a qualified advocate for advice specific to your situation.