Sai Renaissance Phonetically And Visually Similar To Renaissance - SC Restrains Defendants From Using The Former Mark
A three-judge Bench of the Supreme Court comprising Justice L. Nageshwara Rao, Justice BR Gavai and Justice BV Nagarathna noted that the words "RENAISSANCE" and "SAI RENAISSANCE" are phonetically as well as visually similar.
The Court noted that Section 29(9) of the Trade Marks Act provided,"..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."
In appeal, before the Apex Court, was the judgement passed by the Single Judge of the Karnataka High Court allowing the appeal of the Respondents/Defendants and setting aside the judgement of the Principal District Judge, Bangalore in favour of the Appellant/Plaintiff.
Mr KV Viswanathan, Senior Advocate appeared on behalf of the plaintiff while Mr BC Sitarama Rao appeared on behalf of the defendants.
Plaintiff had filed a suit before the trial Court claiming a decree of permanent injunction qua the trademark "SAI RENAISSANCE"; Plaintiff's trademark being "RENAISSANCE".
The plaintiff averred that it is the holder and proprietor of the trademark and service mark RENAISSANCE in relation to hotel, restaurant catering, bar, cocktail lounge, fitness club, spa services, etc.
It was also averred that the mark has been used in a wide variety of goods commonly found in hotels of the Plaintiff.
The plaintiff averred that it came across a website through which it discovered that the defendants were operating a hotel in Bangalore under the impugned mark.
The Defendants contended that RENAISSANCE is a generic word and no exclusive rights can be claimed over it in India as it is not a well-known mark nor does it have any reputation built up by the plaintiff.
The Defendants also averred that they are ardent devotees of Sri Shirdi Sai Baba and Sri Puttaparthi Sai Baba and therefore they used the dictionary word RENAISSANCE after the name of Sai Baba and adopted the name SAI RENAISSANCE.
The Trial Court partly decreed the suit restraining the defendants from using SAI RENAISSANCE or any other mark which incorporates the plaintiff's trademark or is deceptively similar thereto.
On appeal, the High Court held that evidence produced by Plaintiff did not disclose a trans-border reputation was earned by it to uphold its plea in that regard. According to the High Court, no evidence was produced to show that defendants were taking unfair advantage of Plaintiff's trademark. The High Court allowed the appeal and set aside the judgement of the Trial Court. The suit was dismissed. Hence, the appeal before the Apex Court.
The Supreme Court noted that Section 28(1) of the Trade Marks Act provided that subject to the other provisions of the said Act, the registration of a trademark shall, if valid, give to the registered proprietor of the trademark the exclusive right to the use of the trademark in relation to the goods or services in respect of which the trademark is registered and to obtain relief in respect of infringement of the trademark in the manner provided by the said Act.
The Court, after analyzing various provisions of the Act, noted that in all legal proceedings, the original registration of the trademark shall be prima facie evidence of the validity thereof.
The Court noted that it may be necessary to establish that the mark is likely to cause confusion on part of the public, however, "When the trademark of the defendant is identical with the registered trademark of the plaintiff and that the goods or services of the defendant are identical with the goods or services covered by registered trade mark, the Court shall presume that it is likely to cause confusion on the part of the public."
The Court noted that essentials of passing off cannot be equated with an action for infringement as passing off is a common law remedy while an action for infringement is a statutory right conferred on the registered proprietor.
The Court noted that the question to be asked in an infringement action is whether the defendant is using a mark which is the same as, or which is a colourable imitation of the plaintiff's registered trademark.
The Court noted that the trademark was identical to that of the Plaintiff and services rendered were also under the same classes. The Court held that the Trial Court rightly held that goods of the Plaintiff would be covered by Section 29(2)(c) and Section 29(3) of the Act.
The Court noted that the High Court had totally erred in taking into consideration only Section 29(4)(c) of the Act. The Court made the following crucial observations:
"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."
The Court noted that High Court ought not to have entered into the discussion as to whether the Plaintiff's mark had a reputation in India and use of the mark without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the registered mark.
The Court noted that the benefit available under Section 30(1) of the Act is on fulfilment of two conditions viz. the use being in accordance with honest practices and that use is not to take unfair advantage.
The Court noted that the High Court had failed to take into account textual and contextual interpretation. The Court, then, made the following observations:
"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."
Distinguishing the judgement in Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited, (2018) 9 SCC 183, the Court held that in the said case visual appearance was different and products were also different.
Therefore, the Court held that the instant case stood covered by Section 29(2)(c) r/w Section 29(3) of the Act. The Court allowed the appeal and restored the judgement of the Trial Court.
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