Decided by Supreme Court of India on 19th January 2022 (Reportable)

Facts

The Appellant, proprietor and holder of the trademark ‘RENAISSANCE’, had filed a suit against the Respondents for a permanent injunction against the use of the allegedly infringing trademark ‘SAI RENAISSANCE’, as well as any other mark identical to the Respondents’ mark, ‘RENAISSANCE’. The Appellant discovered two hotels being run by the Respondents, in Bangalore and Puttaparthi, and noted that it copied the style, signage, and the word ‘RENAISSANCE’.

The Respondents’ countered the claim stating that the term ‘RENAISSANCE’ was a generic word used widely, and the use of it by the Appellant had not gathered reputation. The Respondents also asserted their obliviousness to the fact that the mark was under use by the Appellant. The Trial Court held the Respondents’ mark to be infringing, and granted an injunction against its use by the Respondents, but denied the Appellant’s claim for damages.

The Respondents filed an appeal before the High Court, against the lower court’s decision. The High Court observed that the Appellant provided no evidence of a trans-border reputation for its mark, of any damage caused to its reputation or distinction of the mark, or of any unfair advantage taken by the Respondents. The High Court did not see any infringement, and allowed the appeal. Aggrieved by the same, the Appellant approached the Supreme Court.

Issue

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.

Law

The Apex Court referred to S. 29 (1), (2) and (3) of the Trade Marks Act, 1999 (“Act”) 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 trade mark.

Analysis

While considering the High Court’s denial of an injunction against the Respondents, the Apex Court considered its decision in the case of Ruston v. Hornsby Ltd., in which it had held that, in case where there was an alleged infringement, the question to be considered was whether the defendant’s mark imitated or was an improper use of the plaintiff’s mark. An injunction would be passed once it was affirmed that the mark of the plaintiff was being improperly used by the defendant, and it was not necessary for the plaintiff to prove actual deception or damage caused by the defendant.

The Supreme Court noted that the High Court and the Trial Court agreed that the marks of the Appellant and the Respondents were identical and the services being offered were also of the same class. However, according to the Supreme Court, the High Court erred in holding that the Appellant’s mark had not gathered any reputation in India, or that the Appellant had not been able to prove dishonest use on part of the Respondents. The High Court, while relying on S. 29(4)(c), had further asserted that there was no likelihood of confusion due to the target class of consumers being completely different.

The Apex Court opined that the provision under S. 29(4) would require the Appellant to prove that it had gathered trans-border reputation in India in case the marks were identical, but the infringing trade mark catered to different class of consumers or services than the registered trademark. In the instant case, the mark of the Respondents, ‘SAI RENAISSANCE’ was identical to the registered mark of the Appellant, and so were the goods and services in respect of which both these marks were used, leaving no room to discuss the reputation of the Appellant’s mark in India. Reiterating its position in the case of Ruston v. Hornsby Ltd., once a mark was proven to be identical to a registered trademark, it was not for the Court to explore deceit or likely confusion from its use.

The Apex Court also relied on the decision laid down in Balasinor Nagrik Cooperative Bank Ltd. v. Babubhai Shankerlal Pandya and Ors., reiterating that a section could not be read in isolation. The Supreme Court opined that the High Court erred by focusing on S. 29(4)(c) alone, and did not take into consideration the other sub-sections of the provision that were applicable as well.

The Apex Court further stated that while relying on the Midas Hygiene Industries (P) Limited and Another v. Sudhir Bhatia and Others, the Court had erred by not taking into account the facts and circumstances of the precedent, which would not apply here. Although it was stated therein that ‘grant of injunction becomes necessary if it prima facie appears that the adoption of mark was dishonest’, the High Court erred in ignoring that it was also stated that an injunction must follow in the case of an infringement.

The Apex Court denied the reliance placed by the Respondents on the cases, Khoday Distilleries Limited (now known as Khoday India Limited) v. Scotch Whisky Association & Ors. as it would not apply here as the instant case did not concern an objection application but infringement of a trademark, and the Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited case was also held to not be applied, as the instant case involved identical marks being used in identical class of goods and services.

Conclusion

The Apex Court came to the conclusion that the High Court had erred in its interpretation of the test laid down under S.29(4) of the Act, as it had not taken into account the other applicable provisions of S.29(4), as well as other provisions which covered the circumstances of the case herein. The Apex Court overturned the order of the High Court, and upheld that the order delivered by the Trial Court as well-reasoned.

Link to the judgement: https://indiankanoon.org/doc/143185473/


Authored and contributed by Tanmaya Purohit, Intern

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