In Order To Avail The Benefit Of Section 30 Of The Said Trade Marks Act, 1999, It Is Necessary That The Use Of The Impugned Trade Mark Is In Accordance With The Honest Practices In Industrial Or Commercial Matters

Case title: Renaissance Hotel Holdings Inc. vs B. VijayaSai

Date of Order: January 19, 2022.

Bench: L. NageswaraRao, BR Gavai,  BVNagarathna

Parties:

• Appellant: Renaissance Hotel Holdings Inc
• Respondent: b. Vijaya sai and others

SUBJECT

The Trade Marks Act, of 1999 is a legislation enacted by the Government of India to protect and regulate the use of trademarks in the country. It aims to promote fair competition and prevent unfair competition by granting exclusive rights to owners of trademarks, allowing them to establish their identities and differentiate their goods and services in the market.

IMPORTANT PROVISIONS

Trade Marks Act, 1999

• Section 29 (1)
• Section 29 (2) 
• Section 29 (3) 
• Section 29(4)(c)
• Section 30

OVERVIEW

• The appellant owns the registered trademark "RENAISSANCE" for hotels, restaurants, bars, etc, and for the goods commonly found in its hotels. In India, they claim to have been using this trademark since 1990. 
• The respondent stated that they adopted the name “SAI RENAISSANCE” for their hotels which they have been running for the past 15years and established their first hotel in 2001.
• The appellant filed the first suit in 2009 to prevent the respondent from using the trademark “SAI RENAISSANCE” or any other trademark similar to the appellant’s trademark. 
• The respondent objected to this, saying that RENAISSANCE is a generic word, and not a popular mark, and the class of consumers for both marks is varied.
• The Trial Court held that the Respondent’s mark was infringing, and granted an injunction against its use by the Respondent, but the appellant's claim for damages was denied.
• An appeal before the High Court was filed by the respondents against the lower court’s decision. 
• The High Court viewed 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 any unfair advantage taken by the Respondents. 
• The High Court allowed the appeal as they did not see any infringement. Aggrieved by the decision, the appellant approached the Supreme Court.

ISSUE RAISED

• The issue the Apex Court was considering was whether the High Court's decision, overturning the Trial Court's decision and holding that the trademark of the Appellant was not infringed, was valid.

ARGUMENTS ADVANCED BY THE APPELLANT

• The appellants argued that infringement occurs when the marks and services of the appellant are exceedingly similar to the marks and services of the respondent, which is rightful in the present case.

ARGUMENTS ADVANCED BY THE RESPONDENT

• The respondents argued that the word "Renaissance" is a generic word and no preferential rights could be granted to it. 
• They also put forth that the hotel Sai Renaissance has been working for the past 15 years and they put together this name as ardent devotees of Sri ShirdiSai Baba.

JUDGEMENT ANALYSIS

• The bench of L NageshwaraRao, BR Gavai, and BV Nagarathnagave the order in favor of Renaissance Hotel Holdings and held that the words “RENAISSANCE” and “SAI RENAISSANCE” are phonetically as well as visually similar. 
• The apex court viewed that the inferior court had made an error in its decision and was not justified enough to interfere with the trial court's order.
• The court also dealt with the issue of the trademark being identical but not the goods and services supplied. 
• The court held that since both trademarks, concerning goods and services, had been registered under Classes 16 and 42, the High Court did not have to interfere in the matter to determine the character of the trademark.
• The Supreme Court emphasized the fact that the High Court has missed out on two principles of interpretation: textual interpretation should be matched with the contextual one and no part of the provision should be construed in isolation.

CONCLUSION

A trademark is a word, phrase, symbol, design, or a combination of these, that identifies and distinguishes the goods or services of one trader from those of others. It serves as a source of reputation and goodwill, enabling consumers to differentiate between the goods or services offered by different traders. The present case dealt with the issue of trademark infringement between Renaissance Hotel Holdings Inc. and VijayaSai and others. The Supreme Court, however, allowed the appeal and was of the view that the High Court made an erroneous decision by interfering with the well-reasoned order of the trial court.