In the case of Renaissance Hotel Holdings Inc versus B.Vijaya Sai and others on 19th January 2022 Hon’ble Supreme Court has reiterated the principle let down by it 52 years back in the case of Ruston & Hornsby Limited vs Zamindara Engineering Co. and Hornsbury limited reported in AIR 1970 SC 1649 para no.7 wherein Hon’ble Supreme Court held that , “where the defendant’s trade mark is identical with plaintiff’s trademark, the Court will not inquire whether the infringement is such as is likely to deceive or cause confusion.” The said principle has been reiterated by Supreme Court in the present case in para nos.47 and 54 of the judgement. Along with the above mentioned issue of law, there are several other issues have been dealt with by Supreme Court in the present case of renaissance hotel. The issues are as under: 1 ) Applicability of section 29 (3) of the trademarks act 1999 is observed in paragraph nos. 48,51 and 71 of the judgement. Section section 29(3) says that when the identical mark is used for identical goods or services in the course of trade, the Court shall presume that there is likelihood of confusion on the part of the public at large. 2) Applicability of section 29 (4) of the trademarks act 1999: Hon’ble Supreme Court has also observed the issue pertaining to applicability section 29 (4) of the trademarks act 1999 in para number 50, 52, and 71 of the judgement. Section 29 (4) of the trademarks act 1999 says that there is an infringement if other person who is not either registered proprietor or permitted user is using the identical end or deceptively similar trademark for the goods or services which is different than that of the goods/services for which the trademark is registered. 3) Applicability of section 29 (5) of the trademarks act 1999:The issue in respect of section 29 (5) of the Act is also dealt with in paragraph nos. 55 and 71 of the judgement. Section 29(5) is in respect of trade name or the corporate name. If anybody is using the registered trademark as a trade name or as a corporate name without any permission or consent from the registered proprietor of the trademark, there is an infringement. 4) Applicability of section 29 (9) of the trademarks act 1999: The issue related to phonetical similarity is also dealt with in para nos.56 & 71. The issue pertaining to phonetic similarity is provided in section 29(9) which says that when the mark is used in the course of trade and the said mark is phonetically similar to the registered trademark, there is an infringement. 5) Applicability of section 30 (1) of the Trademarks Act 1999: The issue related to honest practises in industrial or commercial matters in para no.59 of the judgement. In that paragraph, SC observed that under which circumstances, the defence of section 30 (1) is available and applicable. SC observed that the benefit of S. 30(1) of the Trademarks Act is only available if the two conditions are fulfilled together. The conditions are (1) the use of the impugned trademark is in accordance with the honest practices in industrial and commercial matters and (2) that such a use is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trademark as the word ‘and’ is used between clause (a) &(b) of Section 30(1) of the Act. If either of these two conditions is taken as a defence, such defence under S.30(1) can not be considered by the court. 6) The principle of interpretation of statute and provisions therein is also discussed in paragraph no. 60 by relying upon one judgement of Supreme Court in the case of Reserve Bank of India versus peerless general finance and investment company limited and others reported in 1987 1 SCC 424 para no.33. 7) Principle laid down in Midas case: Supreme Court in the case Midas Hygine Industries private limited versus Sudhir Bhatia. The principle laid down by Supreme Court in paragraph no.5 of the said judgement was that , “it is well settled law that in the case either of trademark or of copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction the grant of injunction. The grant of injunction also becomes necessary if it prima facie appears that they adoption of the mark was itself dishonest.” The said ratio laid down by Supreme Court in that case is retreated in para nos. 64 and 65 in the present case of renaissance hotel where in para no. 65, Supreme Court further observed that the ratio laid down in Midas case can not be used as a ratio for the proposition that, if the plaintiff fails to prove that defendant’s use was dishonest, an injunction cannot be granted. 8) Ratio laid down in Khoday Distilleries is not applicable: Another issue was also dealt with by Supreme Court in respect of the ratio laid down by Supreme Court in the case of Khoday Distilleries. In paragraph no.66 of the present case ,it is held that the ratio laid down in Khoday case is not applicable for infringement of a trademark. The Khoday case was in respect of rectification of a trademark and was not for infringement action. To conclude it can be said that by way of this judgement of renaissance hotel holdings Inc Honb’le Supreme Court has observed and clarified several issues of law in respect of trademarks act.
Author Chirag Bhatt
IP Advocate
