Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors.

Relevant Acts and provisions

Trade Marks Act, 1999

Section 29(2)Section 29(4)Section 29(5)Section 30(1)

Provisions considered: Sections 29(2), 29(4), 29(5) and 30(1) of the Trade Marks Act, 1999, on infringement and its statutory limits.

Brief facts

The appellant, proprietor of a registered mark for hotel and hospitality services used in India since 1990, sued the respondents for infringement and passing off over their use of a composite mark incorporating the same word for two hotels. The trial court decreed a permanent injunction, but a Single Judge of the Karnataka High Court allowed the respondents' appeal, holding the appellant had not shown transborder reputation or that the respondents took unfair advantage of its mark under Section 29(4). The appellant appealed to the Supreme Court.

Issues before the Court

1. Does Section 29(4), meant for dissimilar goods or services, apply where the defendant's services are identical to those covered by the registered mark?
2. Must both conditions in Section 30(1) be satisfied for that defence to succeed?

Court's findings

The Court held that the High Court had erred in testing the case under Section 29(4), which applies only where the defendant's goods or services are dissimilar to those covered by the registered mark, since the respondents were admittedly operating hotels, a service identical to that covered by the appellant's registration. The case squarely fell within Section 29(2), read with the presumption of confusion under Section 29(3) for identical marks and identical services.

The Court held that a defence under Section 30(1) requires satisfaction of both cumulative conditions, namely that the use is in accordance with honest practices and that it does not take unfair advantage of, or is not detrimental to, the distinctive character of the mark, and that the High Court had wrongly confined its analysis to the honesty of adoption alone.

The Court found that the respondents' continued use of the word as part of their hotel's trade name, after becoming aware of the appellant's mark, could not be treated as honest.

Decision

Appeal allowed; the High Court judgment was set aside and the trial court's decree of permanent injunction restored.

Cases cited

• Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980

Authorities referred to in the decision. Please verify each citation in the judgment itself.

Keywords

Deceptive Similarity Dilution Section 29(4) Trademark Infringement Well-known Trade Mark