Legal Understanding in the Case of Renainssance Hotel Holding Inc Vs Vijaya Sai And Ors.
The case elaborates on the issue of the trademark between two parties and the interpretation related to it in a more diligent manner.
The case arises under the Trade Marks Act, 1999, where the appellant/plaintiff requests a permanent injunction to restrain the respondent/defendant from using a trademark related to the appellant’s business. This case had been brought to the Supreme Court as an appeal by the plaintiff, challenging the judgment and order passed by the High Court of Karnataka at Bengaluru in the First Appeal in 2019. Aggrieved from the judgment and decree of the trial court- Principal District Judge, Bangalore Rural District, Bangalore, in 2009, the first appeal was filed in the High Court of Karnataka by the defendant. The Supreme Court, in this judgment, makes observations regarding the court’s interpretation of provisions by the courts.
Facts of the case
In the case of Renaissance Hotel Holdings Inc. v. B. Vijaya Sai, the appellant/plaintiff presents that it is a company incorporated under the laws of the State of Delaware, United States of America, and is the holder and proprietor of the trademark and service mark “RENAISSANCE” in relation to hotel, restaurant, catering, bar, cocktail lounge, fitness club, spa services, etc. these services also include the wide variety of goods commonly found in hotels such as bath robes, slippers, etc. the appellant/plaintiff is a leading brand of hotel and is one of the world’s largest hotel chains since 1981 and since 1990 in India. The mark “RENAISSANCE” in India has been registered under Class 16 and Class 42.
The issue arose when the appellant/plaintiff came across a hotel under the impugned name “SAI RENAISSANCE” which wholly incorporated the appellant/plaintiff’s well-known trademark and service mark “RENAISSANCE”. On investigation, it was discovered that the trademark, its stylized representation, signage, and business cards and leaflets were duplicated as to suggest an affiliation, association, nexus, or connection with the business of “RENAISSANCE”.
To reply to the appellant/plaintiff, the respondents/defendants presented that “RENAISSANCE” is a generic word from the dictionary and no exclusive right could be placed upon it. They further mentioned that the hotel “SAI RENAISSANCE” has been running for the last 15 years, established in the year 2001. Them being a devotee of Sri Shirdi Sai Baba believe that Sri Puttaparthi Sai Baba is the reincarnation of Sri Shirdi Sai Baba and therefore, used the dictionary word “RENAISSANCE” after the name of Sri Shirdi Sai Baba and adopted the name “SAI RENAISSANCE”.
Lastly, they mentioned that since they were not aware of the appellant’s business and with the number of differences in their ways of operating 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.
Trial Court: Examining the evidence and contentions raised, the court partly decreed, restraining the respondents/defendants from using the trademark “SAI RENAISSANCE” or any other trademark which incorporates or reflects the trademark of “RENAISSANCE” and also restricted from operating or franchising under the same trademark with the same dealing as the appellant/plaintiff’s and rejected any claims for damages against the respondents/defendants.
High Court: With the first appeal by the defendant, the court observed that there was no trans-border reputation earned by the plaintiff to uphold its plea. The principle of trans-border reputation allows protecting an international trademark in India, irrespective of whether such trademark is not in use in India. The court further stated that since there is a difference in the standard of the hotels and no evidence to prove an unfair advantage, the word “SAI RENAISSANCE” is detrimental to its distinctive character.
The issue before the Apex Court was to consider whether the decision of the High Court in overturning the decision of the Trial Court and holding there to be no infringement of the Appellant’s trademark was valid.
The word Trademark is mentioned under section 2(zb) of The Trade Marks Act, 1999.
2. The Merriam-Webster dictionary defines a trademark as:
i.) A device (such as a word) pointing distinctly to the origin or ownership of merchandise to which it is applied and legally reserved for the exclusive use of the owner as maker or seller.
ii.) A distinguishing characteristic or feature firmly associated with a person or thing Example- Wearing his trademark tie and brooch.
iii.) It further defines it as securing trademark rights for: registering the trademark of Example- TATA, Infosys, and IBM are examples of trademarks.
3. World Intellectual Property Organization (WIPO):
A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights. The trademark law is outlined with the help of a number of treaties and documents providing them with sustainable properties. Vienna Agreement, Nairobi Treaty, Paris Convention, Singapore Treaty, and many others stands to exist for the survival of successful and harmonious business accounts.
The Apex Court referred to S. 29 (1), (2), and (3) of the Trade Marks Act, 1999 to understand the infringement caused where a mark identical to a registered trademark was used. The Court also referred to S. 29(4)(c), to examine passing off, and to S. 30 for exploring the limits on the effect of a registered trademark.
Judgment and Analysis
The bench of L Nageshwara Rao, BR Gavai, and BV Nagarathna gave the order in favor of Renaissance Hotel Holdings and has held that the words “RENAISSANCE” and “SAI RENAISSANCE” are phonetically as well as visually similar. The apex court held that the inferior court has erred in its decision and was not justified enough to interfere with the order of the Trial court.
The court also dealt with the issue of the trademark being identical but not the goods and services provide. The court was of the view that since both trademarks, in relation to goods and services, had been registered under Class 16 and 42, the High Court did not have to interfere in the matter to determine the character of the trademark.
The Supreme Court laid emphasis on the fact that the High Court has missed out on two principles of interpretation,
i.) Textual interpretation should be matched with the contextual one and
ii.) No part of the provision should be construed in isolation.
The inferior courts have lacked in making the correct construction of the provisions under the Act and made interpretations in isolation of provisions. While the case stands covered under subsections (5) and (9) of Section 29 of the said Act, the High Court has considered only clause (c) of subsection (4) of Section 29 of the said Act. The inferior court also failed to consider the requirements for the benefit under section 30 of the Act. The court failed to consider the necessity of the establishment of fair practices in commercial matters. The court further interpreted the use of ‘and’ & ‘or’ in provisions to satisfy the reputation of a trademark in India.
The court has further pointed out that the High Court’s reference to the case of Midas Hygiene Industries (P) Limited 12 (1991) 3 SCC 410, to reverse the trial court’s injunction was out of context. In the case, it was observed that, when it prima facie appears that there is an infringement and that the adoption of the mark was dishonest, the injunction is necessary. The High Court failed to give effect to an injunction that must follow a case of infringement, either of a trademark or copyright.
The Supreme Court allowed the appeal setting aside the decision of the High Court but maintaining the decision of the Trial Court.
The article first publish on Lexology.com and the same can be accessed here.