RENAISSANCE HOTEL HOLDINGS INC. versus B. VIJAYA SAI AND OTHERS

Citation: [2022] 2 S.C.R. 321 · Decided: 19-01-2022 · Supreme Court of India · Bench: L. NAGESWARA RAO · Disposal: Appeal(s) allowed

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Judgment (excerpt)

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[2022] 2 S.C.R. 321
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RENAISSANCE HOTEL HOLDINGS INC.
v.
B. VIJAYA SAI AND OTHERS
(Civil Appeal No. 404 of 2022)
JANUARY 19, 2022
[L. NAGESWARA RAO, B. R. GAVAI AND
B. V. NAGARATHNA, JJ.]
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
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SUPREME COURT REPORTS
[2022] 2 S.C.R.
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
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with the contextual one – Further, no part of a statute and no word
of a statu

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