- By Chandra Kant
- 22-Jul-2023
REPORTABLE
IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE JURISDICTION
CIVIL APPEAL NO. 404 OF 2022
[Arising out of SLP(C) No. 21428 of 2019]
RENAISSANCE HOTEL HOLDINGS INC. ...APPELLANT(S) VERSUS
B. VIJAYA SAI AND OTHERS ...RESPONDENT(S)
J U D G M E N T B.R. GAVAI, J.
The appellantplaintiff filed a suit being O.S. No. 3 of 2009 before the trial court claiming a decree of permanent injunction to restrain the respondentsdefendants from using the trade mark “SAI RENAISSANCE” or any other trade mark identical with the appellantplaintiff’s trade mark “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.
Delaware, United States of America. It is the further case of the appellantplaintiff 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 appellantplaintiff’s trade mark “RENAISSANCE”. It is the case of the appellantplaintiff 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 appellantplaintiff 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.
incorporates the appellantplaintiff’s wellknown trade mark and service mark “RENAISSANCE”. The appellantplaintiff 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 ByPass Road, Puttaparthi. It was further revealed that the respondentsdefendants were copying appellantplaintiff’s trade mark “RENAISSANCE”, its stylized representation, signage and business cards and leaflets. It is the case of the appellantplaintiff that this was done in such a manner so as to suggest an affiliation, association, nexus or connection with the business of the appellantplaintiff. The appellantplaintiff, therefore, claimed infringement of its registered trade mark “RENAISSANCE” in Class 16 and Class 42. The appellantplaintiff 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.
respondentdefendant 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 respondentdefendant that he has been running the hotel for the last 15 years. According to the first respondentdefendant, 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 respondentdefendant that the hotel was established so as to provide facilities to the devotees of Sri Sai Baba. The respondentsdefendants further submitted that even the first respondentdefendant was not aware that the appellantplaintiff had established any such hotel by incorporating the word “RENAISSANCE” in its name till he received suit summons in the said case.
plaintiff.
“1. Whether the Plaintiff is the registered proprietor of the trade mark/service mark “RENAISSANCE” under the Trade Mark Act 1999?
Additional Issues
“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” |
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.
case of M/s The RENAISSANCE, Cochin v. M/s
RENAISSANCE Hotels Inc. Marriotr[1] 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 appellantplaintiff had admitted that the respondentsdefendants serve only vegetarian food without liquor and that he had no idea that the respondentsdefendants 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 respondentsdefendants have not taken unfair advantage, or that its existence was detrimental to the distinctive character or reputation of the appellantplaintiff’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 June 2012 passed by the trial court and dismissed the suit. Being aggrieved thereby, the appellantplaintiff has approached this Court.
infringement, where the similarity between the plaintiff’s and the defendant’s mark is close either visually, phonetically or otherwise, and once it is found by the Court that there is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated. Reliance in this respect is placed on the judgment of this Court in the case of Kaviraj Pandit Durga Dutt Sharma v. Navaratna
Pharmaceutical Laboratories[4].
“rebirth” and that the name “SAI RENAISSANCE” was adopted for his hotel to signify the birth of Sri Puttaparthi Sai Baba as a reincarnation of Sri Shirdi Sai Baba and that the use of mark “SAI RENAISSANCE” amounts to honest
concurrent use under Section 12 of the said Act. He further submitted that the appellantplaintiff acquiesced to the respondentsdefendants’ use of the mark inasmuch as the suit came to be filed after a long time gap.
respondentsdefendants relies on the judgments of this Court in the cases of Khoday Distilleries Limited (Now known as Khoday India Limited) v. Scotch Whisky Association and Others[6], Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited[7], Corn Products
Refining Co. v. Shangrila Food Products Limited[8] and
Neon Laboratories Limited v. Medical Technologies Limited and Others[9].
(hereinafter referred to as the “1940 Act”). Section 21 of the 1940 Act provided for the right conferred by registration and the exclusive right to use of the trade mark to the registered proprietor of the trade mark and infringement thereof.
Section 21 of the 1940 Act reads thus:
“21. Right conferred by registration.— (1) Subject to the provisions of Sections 22, 25 and 26, the registration of a person in the register as proprietor of a trade mark in respect of any goods shall give to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing provision, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either—
27.The legislature noticed that the 1940 Act was enacted prior to attaining independence, and after attaining independence, the development in the field of commerce and industry was quite rapid, and it was found that the law relating to trade marks was not adequate enough to meet the growing demands. Accordingly, The Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the “1958 Act”) was enacted. Section 29 of the 1958 Act dealt with the infringement of trade marks, which reads thus:
“29. Infringement of trade marks.—(1) A
registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of a trade mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
28.Thereafter, in view of the developments in trading and commercial practices, increasing 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, it was found necessary by the Parliament to repeal the 1958 Act and enact a new Act, i.e., the said Act. It will be relevant to refer to the Statement of Objects and Reasons of the said Act:
“The Trade and Merchandise Marks Act, 1958 has served its purpose over the last four decades. It was felt that a comprehensive review of the existing law be made in view of developments in trading and commercial practices, increasing globalization of trade and industry, the need to encourage investment flows and transfer of technology, need for simplification and harmonization of trade mark management systems and to give effect to important judicial decisions. To achieve these purposes, the present Bill proposes to incorporate, inter alia the following, namely: …..
(j) prohibiting use of someone else’s trade marks as part of corporate names, or name of business concern;
……”
29.The Trade Marks Bill of 1999 was passed by both the
Houses of Parliament and the assent of the President was received on 30th December 1999. It came into force on 15th September 2003. It will be relevant to refer to Sections 28 and 29 of the said Act:
“28. Rights conferred by registration.—(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
29. Infringement of registered trade marks.—(1)
A registered trade mark is infringed by a person
who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of—
is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
30.Subsection (1) of Section 28 of the said Act provides that subject to the other provisions of the said Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by the said Act. Subsection (2) of Section 28 of the said Act provides that the exclusive right to the use of a trade mark given under subsection (1) of Section 28 of the said Act shall be subject to any conditions and limitations to which the registration is subject. The provisions of subsection (3) of Section 28 of the said Act would not be relevant for the purpose of the present case.
31.Subsection (1) of Section 29 of the said Act provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. Subsection (2) of Section 29 of the said Act provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. Subsection (3) of Section 29 of the said Act is of vital importance. It provides that in any case falling under clause (c) of subsection (2) of Section 29 of the said Act, the court shall presume that it is likely to cause confusion on the part of the public.
34.Subsection (4) of Section 29 of the said Act provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which 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; and 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.
35.Subsection (5) of Section 29 of the said Act provides that a registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
36.Subsection (6) of Section 29 of the said Act provides that for the purposes of this section, a person uses a registered mark, if, in particular, he affixes it to goods or the packaging thereof; offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark; imports or exports goods under the mark; or uses the registered trade mark on business papers or in advertising.
37.Subsection (7) of Section 29 of the said Act provides that a registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorized by the proprietor or a licensee.
38.Subsection (8) of Section 29 of the said Act provides that a registered trade mark is infringed by any advertising of that trade mark if such advertising takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or is detrimental to its distinctive character; or is against the reputation of the trade mark.
39.Subsection (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 and reference in this section to the use of a mark shall be construed accordingly.
40.Section 30 of the said Act deals with the limits on effect of registered trade mark. Section 30 of the said Act, which would also be of vital importance in the present case, reads thus:
“30. Limits on effect of registered trade mark.—
—
characteristics of goods or services;
“31. Registration to be prima facie evidence of validity.—(1) In all legal proceedings relating to a trade mark registered under this Act (including applications under Section 57), 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.
(2) In all legal proceedings, as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registrable trade mark under Section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration.”
prima facie evidence of the validity thereof.
Kaviraj Pandit Durga Dutt Sharma (supra):
“28. The other ground of objection that the findings are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a registered trade mark and in equating the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark. We have already pointed out that the suit by the respondent complained both of an invasion of a statutory right under Section 21 in respect of a registered trade mark and also of a passing off by the use of the same mark. The finding in favour of the appellant to which the learned counsel drew our attention was based upon dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in the colour and other features and their general getup together with the circumstance that the name and address of the manufactory of the appellant was prominently displayed on his packets and these features were all set out for negativing the respondent's claim that the appellant had passed off his goods as those of the respondent. These matters which are of the essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy for the event of the use by another of that mark or a colourable imitation thereof. While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods” (Vide Section 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the getup, 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; whereas in the case of 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.”
45.It could thus be seen that 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 getup, 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.
46.Again, while considering the provisions of Section 21 of the 1940 Act, this Court in the case of Ruston & Hornsby Limited (supra), observed thus:
“4. It very often happens that although the defendant is not using the trade mark of the plaintiff, the get up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiff's mark the get up of the defendant's goods may be so different from the get up of the plaintiff's goods and the prices also may by so different that there would be no probability of deception of the public. Nevertheless, in an action on the trade mark, that is to say, in an infringement action, an injunction would issue as soon as it is proved that the defendant is improperly using the plaintiff's mark.
“The statute law relating to infringement of trade marks is based on the same fundamental idea as the law relating to passingoff. But it differs from that law in two particulars, namely (1) it is concerned only with one method of passingoff, namely, the use of a trade mark, and (2) the statutory protection is absolute in the sense that once a mark is shown to offend, the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his goods from those of the registered proprietor. Accordingly, in considering the question of infringement the Courts have held, and it is now expressly provided by the Trade Marks Act, 1938, Section 4, that infringement takes place not merely by exact imitation but by the use of a mark so nearly resembling the registered mark as to be
likely to deceive.””
47.It could thus be seen that this Court again reiterated that 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. It has further been held that 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. It has been reiterated that no case of actual deception nor any actual damage needs to be proved in such cases. This Court has further held that 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.
48.In the present case, both the trial court and the High
Court have come to the conclusion that the trade mark of the respondentsdefendants 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 appellantplaintiff’s trade mark “RENAISSANCE” was registered. In such circumstances, the trial court had rightly held that the goods of the appellantplaintiff would be covered by Section 29(2)(c) read with Section 29(3) of the said Act.
49.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 respondentsdefendants’ 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 subsection (4) of Section 29 of the said Act to arrive at such a conclusion.
50.We find that the High Court has totally erred in taking into consideration only clause (c) of subsection (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 subsection (2) of Section 29 of the said Act, it has used the word ‘and’ after clauses (a) and (b) in subsection (4) of Section 29 of the said Act. It could thus be seen that the legislative intent is very clear. Insofar as subsection (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.
51.It is further clear that in case of an eventuality covered under clause (c) of subsection (2) of Section 29 in view of the provisions of subsection (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.
52.The perusal of subsection (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 subsection (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 subsection (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, subsection (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.
53.Undisputedly, the appellantplaintiff’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 appellantplaintiff’s trade mark, was being used by the respondentsdefendants in relation to the goods and services similar to that of the appellantplaintiff’s.
54.In these circumstances, we are of the considered view that 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. We find that the High Court has erred in entering into the discussion as to whether the respondentsdefendants 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 respondentsdefendants belonging to the same group as of the appellantplaintiff’s. As held by this Court in the case of Ruston & Hornsby Limited (supra), 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 gone 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.
55. It is not in dispute that the appellantplaintiff’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 respondentsdefendants, was also in relation to Class
16 and Class 42. As such, the use of the word
“RENAISSANCE” by the respondentsdefendants as a part of their trade name or business concern, would squarely be hit by subsection (5) of Section 29 of the said Act.
56. It is further to be noted that the words “RENAISSANCE” and “SAI RENAISSANCE” are phonetically as well as visually similar. As already discussed hereinabove, subsection (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 subsection (9) of Section 29 of the said Act.
57.It is pertinent to note that, the High Court has relied on
Section 30(1)(b) of the said Act in paragraph (18) of the impugned judgment. It will be relevant to refer to paragraph
(18), which reads thus:
“18. Section 30(1)(b) of the Act has also contextual application. This Section reads as follows:
“30. Limits of effect of registered trade mark. (1) Nothing in section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use
(a)xxxxxxxxxxx
(b)is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.””
58.The glaring mistake that has been committed by the
High Court is the failure to notice the following part of Section 30(1) of the said Act:
“(a) is in accordance with honest practices in industrial or commercial matters, and”
59.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. It is again to be noted that in subsection (1) of Section 30 of the said Act, after clause (a), the word used is ‘and’, like the one used in subsection (4) of Section 29 of the said Act, in contradistinction to the word ‘or’ used in subsection (2) of Section 29 of the said Act. The High Court has referred only to the condition stipulated in clause (b) of subsection (1) of Section 30 of the said Act ignoring the fact that, to get the benefit of subsection (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.
60.We find that the High Court has failed to take into consideration two important principles of interpretation. The first one being of textual and contextual interpretation. It will be apposite to refer to the guiding principles, succinctly summed up by Chinnappa Reddy, J., in the judgment of this Court in the case of Reserve Bank of India v. Peerless General Finance and Investment Co. Ltd. and Others[10]:
“33. Interpretation must depend on the text and the context. They are the bases of interpretation. One may well say if the text is the texture, context is what gives the colour. Neither can be ignored. Both are important. That interpretation is best which makes the textual interpretation match the contextual. A statute is best interpreted when we know why it was enacted. With this knowledge, the statute must be read, first as a whole and then section by section, clause by clause, phrase by phrase and word by word. If a statute is looked at, in the context of its enactment, with the glasses of the statutemaker, provided by such context, its scheme, the sections, clauses, phrases and words may take colour and appear different than when the statute is looked at without the glasses provided by the context. With these glasses we must look at the Act as a whole and discover 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. It is by looking at the definition as a whole in the setting of the entire Act and by reference to what preceded the enactment and the reasonsfor it that the Court construed the expression “Prize Chit” in Srinivasa [(1980) 4 SCC 507 : (1981) 1 SCR 801 : 51 Com Cas 464] and we find no reason to depart from the Court's
construction.”
61.It is thus trite law that 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. As already discussed hereinabove, 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 subsection (4) of Section 29 of the said Act and a part of the provision in subsection (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, in our view, would not be permissible. We are at pains to say that the High Court fell in error in doing so.
62.Another principle that the High Court has failed to notice is that a part of a section cannot be read in isolation. This Court, speaking through A.P. Sen, J., in the case of
Balasinor Nagrik Cooperative Bank Ltd. v. Babubhai
Shankerlal Pandya and Others[11], observed thus:
“4. …..It is an elementary rule that construction of a section is to be made of all parts together. It is not permissible to omit any part of it. For, the principle that the statute must be read as a whole is equally applicable to different parts of the same section…..”
This principle was reiterated by this Court in the case of
Kalawatibai v. Soiryabai and Others[12]:
“6. ….. It is well settled that a section has to be read in its entirety as one composite unit without bifurcating it or ignoring any part of it…..”
63.Ignoring this principle, the High Court has picked up clause (c) of subsection (4) of Section 29 of the said Act in isolation without even noticing the other provisions
contained in the said subsection (4) of Section 29 of the said Act. Similarly, again while considering the import of subsection (1) of Section 30 of the said Act, the High Court has only picked up clause (b) of subsection (1) of Section 30 of the said Act, ignoring the provisions contained in clause (a) of the said subsection (1) of Section 30 of the said Act.
64.That leaves us with the reliance placed by the High
Court on the judgment of this Court in the case of Midas Hygiene Industries (P) Limited (supra). The High Court has relied on the following observations of this Court in the aforementioned case:
“5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.
[emphasis supplied by me]”
65. The emphasis has been placed by the High Court on the observations of this Court in the case of Midas
Hygiene Industries (P) Limited (supra) to the effect that the grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest. The High Court has relied upon the said observations to reverse the order of injunction on the ground that there is no dishonesty in the respondentsdefendants’ adoption of the mark and therefore, they cannot be said to have infringed the trade mark. In our considered view, the aforesaid observations are made out of context. In the said case, the suit was filed for passing off or for infringement of the copyright. In the said case, the Single Judge of the High Court had granted injunction in favour of the plaintiff from manufacturing, marketing, distributing or selling
insecticides, pesticides as well as insect repellent under the name ‘LAXMAN REKHA’. The Division Bench had vacated the injunction on the ground that there was delay and laches. This Court found that at least from 1991, the plaintiff was using the mark ‘LAXMAN REKHA’ and the plaintiff was having a copyright in the marks ‘KRAZY LINES’ and ‘LAXMAN REKHA’ with effect from 19th November 1991. It was also found that the respondent worked with the plaintiff prior to launching his business. In the said case, this Court observed that the grant of injunction becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest. However, the said judgment cannot be used as a ratio for the proposition that, if the plaintiff fails to prove that the defendant’s use was dishonest, an injunction cannot be granted. On the contrary, the High
Court has failed to take into consideration the observations made in the very same paragraph to the effect that in cases of infringement, either of a trade mark or copyright, normally an injunction must follow.
66.Insofar as the reliance placed by the learned counsel for the respondentsdefendants on the judgment of this Court in the case of Khoday Distilleries Limited (supra) is
concerned, the said case arose out of an application filed by the applicants on 21st April 1986 with regard to rectification of the trade mark. In the said case, the manufacture of the product was started by the company in May 1968. The said company filed an application for registration of its mark before the competent authority. The manufacturer was informed that its application was accepted and it was allowed to proceed with the advertisement and the trade mark was subsequently registered inasmuch as there was only one opposition, and as such, the trade mark came to be registered. The applicants had not filed any opposition application. They came to know of the manufacturer’s mark on or about 20th September 1974. They filed an application for rectification of the said trade mark on 21st April 1986.
The question of acquiescence was considered in the said case since it was noticed that though the product was being manufactured since 1968 and though the applicants who sought rectification application came to know about the same on or around 20th September 1974, the rectification application came to be filed only in the year 1986. The present case arises out of an action for infringement of a trade mark. As such, ratio in Khoday Distilleries Limited
(supra), would not be applicable to the present case. It is further to be noted that this Court in paragraph (84) of the said judgment has specifically observed that the said Act had no application in the said case, which reads thus:
“84. So far as the applicability of the 1999 Act is concerned, having regard to the provisions of Sections 20(2) and 26(2), we are of the opinion that the 1999 Act will have no application.”
67.In that view of the matter, reliance placed by the respondentsdefendants on the judgment of this Court in the case of Khoday Distilleries Limited (supra) is misplaced.
68.Insofar as reliance placed on the judgment of this Court in the case of Nandhini Deluxe (supra) is concerned, in the said case, the marks for consideration were “Nandhini” and “Nandini”. It will be relevant to refer to the following observations of this Court in the said case:
“30. Applying the aforesaid principles to the instant case, when we find that not only visual appearance of the two marks is different, they even relate to different products. Further, the manner in which they are traded by the appellant and the respondent respectively, highlighted above, it is difficult to imagine that an average man of ordinary intelligence would associate the goods of the appellant as that of the respondent.”
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. As such, we have no hesitation to hold that the High Court was not justified in interfering with the wellreasoned order of the trial court.
No. 3 of 2009 is maintained.
……....….......................J.
[L. NAGESWARA RAO]
..…....….......................J. [B.R. GAVAI]
….…….........................J.
[B.V. NAGARATHNA] NEW DELHI;
JANUARY 19, 2022.