“The essence of law lies in the spirit, not its letter, for the letter is significant only as being the external manifestation of the intention that underlies it”
-Salmond
RENAISSANCE HOTEL HOLDINGS INC. V. B. VIJAYA SAI AND OTHERS
BACKGROUND OF THE CASE
The appellant-plaintiff in this case is Renaissance Hotel Holdings Inc, a world-class luxury hotel chain incorporated in the United States that has been conducting its hospitality business under the trademark name ‘Renaissance’ around the world since 1981. In India, the appellant- plaintiff also operates hotel and convention centre in Mumbai and Goa. The appellant-plaintiff is the holder and proprietor of the trademark and service mark ‘Renaissance’ in India in relation to hotel, restaurant, catering, bar, cocktail lounge, fitness club, spa services in class 42 and hotel products in class 16 such as bath robes, slippers, shirts, hats, matchboxes, writing paper, and so on with the words ‘RENAISSANCE’ imprinted on its products. They also own the domain name www.renaissancehotels.com and spend approximately US$ 14 million per year on global advertising and marketing. The appellant¬-plaintiff came across a website at www.sairenaissance.com through which it discovered that the respondent-defendants were operating one hotel in Bangalore and another one in Puttaparthi under the impugned name “SAI RENAISSANCE”, which wholly incorporates the appellant-plaintiff’s world-famous trademark and service mark “RENAISSANCE”.
The appellant-plaintiff had filed a suit in the trial court, claiming damages of Rs 3,50,000/-and restraining the respondent-defendants from using the name ‘SAI RENAISSANCE’ or any other trademark identical with the plaintiff’s trademark ‘RENAISSANCE,’ as well as from opening, operating, managing, franchising, licencing, dealing directly or indirectly in hospitality services of any kind, and printing the impugned marks on any products. The trial court partially decreed the suit by restraining the respondent-defendants from using the trademark “SAI RENAISSANCE” or any other trademark that incorporates or is deceptively similar to the appellant-plaintiff’s trademark “RENAISSANCE” in relation to goods in class 16 and services in class 42 and from opening, operating, managing, franchising, licencing, or dealing directly or indirectly in hotels, restaurants, or hospitality services of any kind under the trademark or service mark “RENAISSANCE” or any deceptively similar mark, including the internet domain name www.sairenaissance.com However, the trial court rejected the claim for damages. The High Court, allowing defendant’s appeal, observed that there was no infringement of trademark, and set aside the Trial Court judgment. This made the appellant plaintiff approach the Supreme Court.
ISSUE
Whether the use of the mark ‘SAI RENAISSANCE’ by the respondent-defendants will amount to trademark infringement?
APPELLANT-PLANTIFF’S CONTENTIONS
Shri K.V. Viswanathan, learned Senior Counsel appearing on behalf of the appellant-plaintiff, contended that the test set out in Sections 29(1), 29(2), and 29(3) of the Trademarks Act, 1999 (hereinafter referred to as the “Act”) would apply in this case. Furthermore, he contended that the High Court erred in referring only to clause (c) of Section 29(4) of the Act, which would be applicable only if all three conditions were met. He also stated that because the defendants were using the trademark RENAISSANCE as part of their business name, it falls squarely under section 29(5) of the act and thus is liable for infringement. Shri Viswanathan argued that in an action for infringement, where the similarity between the plaintiff’s and defendant’s marks is close either visually, phonetically, or otherwise, and once the Court determines that there is an imitation, no further evidence is required to establish that the plaintiff’s rights have been violated. He cited Ruston & Hornsby v Zamindara Engineering Co, Kaviraj Sharma v. Navratna Laboratories, Laxmikanth Patel v. ChetanShah to support his contentions.
RESPONDENT-DEFENDANTS CONTENTIONS
Respondent-defendants’ learned counsel Shri Sitarama Rao submitted that the suit could not be maintained since the appellant-plaintiff was not a legal person and the term ‘RENAISSANCE’ is generic English word, and thus no monopoly could be ascribed to its use. He claimed that the respondent’s parents named him “Vijaya Sai” because they believed he was born as a result of their prayers to Sri Sai Baba, and that because renaissance means rebirth, the name ‘SAI RENAISSANCE’ was adopted to signify the birth of Sri Puttaparthi Sai as a reincarnation of Sri Shirdi Sai Baba, and thus it amounts to honest and concurrent use under section 12 of the act. Shri Sitarama Rao contended that the High Court correctly determined that the respondents-defendants use was honest and that their reasoning for using the term “SAI RENAISSANCE” was justifiable. He relied on Khoday Distilleries Limited v. Scotch Whisky Association, Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited, CornProducts Refining Co. v. Shangrila Food Products Limited and Neon Laboratories Limited v. Medical Technologies Limited to support his contentions.
HELD
The Supreme Court Bench comprising of Justices L. Nageswara Rao, BR Gavai and BV Nagarathna meticulously referred to the legislative scheme of the trademark law in India before passing the verdict. After carefully interpreting Section 29 of the act, the Hon’ble Court stated that the legislative intent is clear when the defendant’s trademark is identical with the registered trademark of the plaintiff and the defendant’s goods or services are identical with the goods or services covered by the registered trademark, the Court shall presume that it is likely to cause public confusion. The Court further held that if the defendant has adopted the essential features of the plaintiff’s trade mark, the fact that the get-up, 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 clearly indicate a trade origin different from that of the registered proprietor of the mark, would be immaterial in a case of trade mark infringement, 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. Moreover, the Hon’ble Court stated that in an infringement action, an injunction would be issued as soon as it is proven that the defendant is improperly using the plaintiff’s mark, and no case of actual deception or actual damage need to be proved in such cases. Coming to the present case the Hon’ble Court stated that since both the Trial Court and the High Court has come to the conclusion that the trademark on the respondent-defendants is identical to that of the appellant-plaintiffs with respect to the same class of goods and services the Trial Court had rightly held that the goods of the appellant-plaintiff would be covered under Section 29(2)(c) read with Section 29 (3) of the said act. The Hon’ble Court further added that the High Court erred in entering into the discussion of the trans-border reputation of the impugned mark as well as in assessing only clause (c) of subsection (4) of Section 29 of the said Act. It should be noted that, whereas the legislature used the word ‘or’ after clauses (a) and (b) in subsection (2) of Section 29 of the said Act, it used the word ‘and’ after clauses (a) and (b) in subsection (4) of Section 29 of the said Act. As can be seen, the legislative intent is very clear. In the case of subsection (2) of Section 29 of the said Act, any of the conditions specified in clauses (a), (b), or (c) is sufficient. Even while interpreting Section 30 the High Court erred to take the value of the word ‘and’ between clause (a) and (b) into consideration. The Supreme Court observed that while interpreting the provisions of a statute, the textual interpretation should be matched with the contextual one and the High Court has failed to do the same. Further explaining the significance of interpretation of statuets the Hon’ble court stated that the Act must be examined as a whole, and it must be determined what each section, clause, phrase, and word is meant and designed to say in order to fit into the overall scheme of the Act. No part of a statute or word of a statute can be interpreted in isolation. The apex court also referred to Kalawatibai v. Soiryabai, Balasinor Nagrik Cooperative Bank Ltd. v. Babubhai Shankerlal Pandya, Ruston v Hornsy etc while passing the judgement. Therefore, the judgement passed by the High Court is set aside and the decree passed by the trial court is maintained.
The court’s decision makes a strong point about the importance of interpreting words properly, as this can, at times, change the entire meaning of the relevant statutory provision. In interpreting the law, the judicial system should suppress evil and wrong so as to advance the true meaning and scope of the statute. Lawmakers cannot anticipate the myriad potential future situations that might arise, nor can they create a law that will cover all such eventualities. As a result of this inevitable conflict, it is the responsibility of the Judges to utilize the effective methods of Interpretation to ensure that justice prevails.