Identical Trademarks: A dilemma of Textual interpretation v. Contextual interpretation of a Statute

Introduction

In the case of Renaissance Hotel Holdings INC Vs B Vijaya Sai (2022), an appeal was recently filed in the Supreme Court of India against a High Court of Karnataka order finding that the respondents/defendants had not violated the appellant/trademark plaintiff’s “RENAISSANCE” under the Trade Marks Act, 1999. This blog examines the Supreme Court’s decision in the aforementioned case.

Factual Background:

The holder and proprietor of the trademark and service mark “RENAISSANCE” in relation to hotel, restaurant, catering, bar, cocktail lounge, fitness club, spa services, and other services is Renaissance Hotel Holdings Inc., a company incorporated under the laws of the State of Delaware, United States of America. The respondents were running two hotels in Bangalore and Puttaparthi under the name “SAI RENAISSANCE,” which fully embraces the well-known trademark and service mark “RENAISSANCE.”The appellant claimed that it has been using the trademark “RENAISSANCE” for its hospitality business around the world since 1981, and that it is one of the world’s largest and leading hotel chains, having used the trademark “RENAISSANCE” in India since 1990. The respondents were accused of copying the appellant’s trademark “RENAISSANCE,” its stylized depiction, signage, and business cards and brochures in order to imply an affiliation, relationship, nexus, or connection with the appellant’s firm. The trial court partially ruled in favour of the appellant/plaintiff by prohibiting the respondents/defendants from using the trademark “SAI RENAISSANCE” and from opening, operating, managing, franchising, licencing, or dealing directly or indirectly in hotels, restaurants, or hospitality services of any kind under the trademark “RENAISSANCE,” including the use of the domain name www.sairenaissance.com.The respondents/defendants took their case to the Kerala High Court, citing their dissatisfaction with the Trial Court’s decision. The High Court stated that the evidence presented by the appellant/plaintiff was insufficient to support the claim that the respondents were taking unfair advantage of the appellant’s trademark or that the use of the term “SAI RENAISSANCE” was detrimental to the appellant’s trademark’s distinctive character or reputation.

Question of Law:

  1. Whether the respondents/defendants infringed on the appellant/trademark defendant’s “RENAISSANCE”?

Analysis:

The Apex Court first noted that the Trial Court and the High Court both came to a conclusion  that the respondents’/defendants’ trademark as well as goods and services (i.e., Class 16 and Class 42) was identical to that of the appellant/ plaintiff. Therefore, , the provisions of Section 29, specifically Section (2)(c) read with sub-section (3) of Section 29, of the Trade Marks Act, 1999, were applied to the case. It was also covered under sub-sections (5) and (9) of Section 29 of the Trademark Act, 1999(hereinafter referred to as the Act).

Section 29 (2) and 29(4) of the Act:

Section 29 of the Act deals with situations where the trademark is identical or similar and the goods covered by the trademark are identical or similar, while subsection (4) of the Act deals with situations where the trademark is identical but the goods or services are not similar to those for which the trademark is registered.

Furthermore, it is an undisputed fact that the appellant/trademark plaintiff’s “RENAISSANCE” was registered in relation to goods and services in Classes 16 and 42, and that the respondents/defendants were using the mark “SAI RENAISSANCE,” which is identical or similar to the appellant/trademark, plaintiff’s in relation to goods and services similar to the appellant/trademark, plaintiff’s as noted by the Court. As a result, the High Court was barred from debating whether the appellant/brand plaintiff’s has a reputation in India and whether the use of the mark without justification takes unfair advantage of or harms the registered trademark. The Court relied on the decision in Ruston & Hornsby Limited v. Zamindara Engineering Co. (1969) to reach the conclusion that once the defendant’s trademark was found to be identical to the plaintiff’s registered trademark, the Court could not have considered whether the infringement was likely to deceive or cause confusion in an action for infringement. In a trademark infringement case, an injunction would be given as soon as it was proven that the defendant was misusing the plaintiff’s trademark.

It was also pointed out that the High Court erred in relying solely on the condition set forth in clause (c) of Section 29(4) of the Trade Marks Act, 1999 to determine whether the trademark had been violated, as the same would not satisfy all three conditions set forth in the said section.

Section 30 (1) of the Act:

The Court also noted that Section 30(1) of the said Act reveals that in order to benefit from Section 30 of the said Act, the twin conditions must be met:

  1. The use of the impugned trade mark must be in accordance with honest practices in industrial or commercial matters, and
  2. Such use must not take unfair advantage of or be detrimental to the trade mark’s distinctive character or repute.

The word ‘and’ is used in subsection (1) of Section 30 of the said Act after clause (a), in contrast to the word ‘or’ used in subsection (2) of Section 29 of the said Act, so the High Court erred by only referring to the condition stipulated in clause (b) of subsection (1) of Section 30 of the said Act, ignoring the fact that to get the benefit of subsection (1) of Section 30 of the said Act, both a) and b) of subsection (1) of Section 30 of the said

As a result, the High Court neglected to consider the rules of textual and contextual interpretation set forth in the case of Reserve Bank of India v. Peerless General Finance and Investment Co. Ltd. and Others (1987).

Explaining the rule of interpretation, the Court said,

“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.  Statutes have to be construed so that every word has a place and everything is in its place.”

As a result, the Supreme Court found that respondents/defendants had infringed on the appellant/trademark plaintiff’s “RENAISSANCE” and reversed the High Court’s decision. When the defendant’s trademark is identical to the plaintiff’s registered brand and their products or services are same, the Apex Court decided that public confusion is presumed. The same would be a flagrant violation of the Trade Mark Act of 1999, Section 29.

Conclusion

One of the aims of the aforementioned Act is to make it illegal to use someone else’s trademark as part of the corporate name or the name of a business entity. If the Act’s entire scheme is considered as a whole, it allows for the rights provided by registration as well as the right to sue the owner of a registered trademark for trademark infringement. The legislative framework implemented under the abovementioned Act elaborates on the circumstances in which a registered trademark owner can file an action for trademark infringement and the limitations on the registered trademark’s effect. It was properly unlawful to take a portion of the provisions in subsection (4) of Section 29 of the said Act and a portion of the provisions in subsection (1) of Section 30 of the said Act and give them a textual meaning without considering the context in which they must be understood. A part of a section cannot be read in isolation. The Supreme Court correctly construed the principles, holding that it is a basic rule that all components of a section must be assembled together. It is not permitted to leave any part of it out because the notion that a statute must be interpreted in its entirety applies equally to different parts of the same statute.

Author: Anuja Saraswat – a student of  B.A.LL.B (Hons.) from NMIMS Kirit P. Mehta School of Law (Mumbai), in case of any queries please contact/write back to us via email vidushi@khuranaandkhurana.com or contact us at Khurana & Khurana, Advocates and IP Attorneys.

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