Renaissance Hotel Holdings Inc. Vs B. Vijaya Sai: Trademark Infringement and honesty in adoption
Case Title: Renaissance Hotel Holdings Inc. vs B. Vijaya Sai and Others
Date of Order: 19 January 2022
Case No.: Civil Appeal No. 404 of 2022 (Arising out of SLP(C) No. 21428 of 2019)
Citation: [2022] SCC OnLine SC 40
Court: Supreme Court of India
Judges: Hon'ble Justices B.R. Gavai, B.V. Nagarathna, and L. Nageswara Rao
Introduction:The case of Renaissance Hotel Holdings Inc. vs B. Vijaya Sai is a landmark judgment in Indian trademark law, elucidating the principles of infringement, trans-border reputation, honest adoption and cuncurrent user and the application of Section 29 and Section 30 of the Trade Marks Act, 1999.
This case involved the appellant, Renaissance Hotel Holdings Inc., a renowned global hospitality chain, and the respondents, B. Vijaya Sai, operating under the name “SAI RENAISSANCE.” The central issue revolved around the use of the trademark “RENAISSANCE” and whether the respondent's use constituted infringement, despite the prefix “SAI.”
Factual Background:The appellant, Renaissance Hotel Holdings Inc., incorporated in Delaware, USA, is a global hospitality chain using the trademark “RENAISSANCE” since 1981, including in India from 1990, with hotels in Mumbai and Goa. The appellant registered the trademark in India under Class 16 (printed materials) and Class 42 (hotel services).
The dispute arose when the appellant discovered that the respondents were operating hotels under the name “SAI RENAISSANCE” in Bangalore and Puttaparthi. The appellant alleged that this usage infringed its registered trademark and sought a permanent injunction and damages.
Procedural Background:The trial court ruled in favor of the appellant, restraining the respondents from using the mark “SAI RENAISSANCE” in relation to printed materials and hotel services under Classes 16 and 42. However, the court rejected the appellant’s claim for damages.
On appeal, the Karnataka High Court reversed the trial court’s decision, holding that the appellant failed to establish trans-border reputation and that the respondents’ use was not detrimental to the appellant’s trademark. The appellant then approached the Supreme Court.
Issues Involved:
1. Whether the appellant's trademark “RENAISSANCE” was infringed by the respondents’ use of “SAI RENAISSANCE.”
2. Whether the High Court erred in its interpretation of Sections 29 and 30 of the Trade Marks Act, 1999.
3. Whether the appellant’s trademark had a trans-border reputation in India.
4. Whether the respondents’ use of the mark was honest concurrent use under Section 12 of the Act?
Submissions of Parties:
Appellant's Submissions:
The appellant argued that the respondents’ use of “SAI RENAISSANCE” was phonetically and visually similar to its registered trademark, amounting to infringement under Section 29(5) and (9) of the Act.
It relied on judgments like Laxmikant V. Patel v. Chetanbhai Shah [(2002) 3 SCC 65], asserting that prior use and registration provide exclusive rights.
The appellant contended that the High Court misapplied Section 29(4), which requires proof of reputation only when the goods/services are dissimilar.
Respondents' Submissions:
The respondents argued that “RENAISSANCE” is a generic term meaning “rebirth” and was used in homage to Sai Baba as “SAI RENAISSANCE”.
They claimed honest concurrent use under Section 12 of the Act and highlighted that their clientele was different from the appellant’s clientele.
Cited cases like Khoday Distilleries Ltd. v. Scotch Whisky Association [(2008) 10 SCC 723] and Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd. [(2018) 9 SCC 183] to support their defense.
Discussion on Judgments Cited:
Laxmikant V. Patel v. Chetanbhai Shah established that prior use of a trademark grants exclusive rights irrespective of deceptive similarity.
Ruston & Hornsby Ltd. v. Zamindara Engineering Co. [(1969) 2 SCC 727] ruled that no proof of confusion is necessary when the mark is identical.
Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia [(2004) 3 SCC 90] emphasized the importance of injunctions in trademark infringement.
Reasoning and Analysis:
The Supreme Court held that the High Court misinterpreted Section 29 by applying sub-section (4), which pertains to dissimilar goods/services. Here, both parties were in the hospitality industry, making sub-sections (1), (2), and (3) applicable.
The Court clarified that once a mark is registered, its exclusive use is protected. The addition of the prefix “SAI” did not negate infringement as per Section 29(5) and (9).
The respondents' argument of honest concurrent use was rejected as they failed to prove long, continuous use without knowledge of the appellant’s mark. The Court emphasized textual and contextual interpretation, noting that the High Court overlooked essential conditions of Section 30.
The Supreme Court outlined how a defendant could establish honesty in adoption of a trademark, particularly under Section 30(1) of the Trade Marks Act, 1999. According to the judgment, for a defendant to successfully claim honest adoption and use, two key conditions must be fulfilled simultaneously:
Honest Practices in Industrial or Commercial Matters:The defendant must demonstrate that the adoption and use of the trademark were in accordance with honest practices within the industry. This involves proving that the selection of the mark was bona fide, without any intention to exploit the goodwill associated with the registered trademark of another party.
No Unfair Advantage or Detriment to the Distinctive Character or Repute of the Registered Mark:The use of the mark must not take unfair advantage of, nor be detrimental to, the distinctive character or repute of the registered trademark. Even if the defendant claims honest adoption, any association that creates a likelihood of confusion or benefits from the reputation of the registered trademark negates the defense.
In this case, the Supreme Court found that the High Court had erroneously considered only the second condition (i.e., lack of unfair advantage or detriment) and overlooked the first essential condition of honest practices. The Court held that the defendants failed to prove that their adoption of “SAI RENAISSANCE” was honest, as the use of the word “RENAISSANCE” was phonetically and visually similar to the appellant’s registered trademark and directly related to the same industry (hospitality services).
The Court emphasized that merely stating the term was chosen due to religious devotion (in reference to Sai Baba) was insufficient. The defendants also could not show continuous, long-term use without knowledge of the appellant’s established global brand. Hence, their defense of honest adoption failed.
For a defendant to establish honesty in adoption, they must show both:Bona fide selection without intent to mislead or benefit from another's trademark, andNo resultant unfair advantage or harm to the existing registered trademark's reputation.
Final Decision:The Supreme Court quashed the High Court’s order and reinstated the trial court’s injunction against the respondents from using the trademark “SAI RENAISSANCE.” No damages were awarded, and pending applications were disposed of.
This judgment reaffirms the stringent protection offered to registered trademarks in India, emphasizing that even slight variations in usage may constitute infringement when the core trademark is identical.
Dsclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
