The Supreme Court ruled that “RENAISSANCE” and “SAI RENAISSANCE” are phonetically and visually similar.
The appellant plaintiff filed a suit before the trial court claiming a decree of permanent injunction to restrain the respondents defendants from using the trademark “SAI RENAISSANCE” or any other trademark identical with the appellant plaintiff’s trademark “RENAISSANCE”, and from opening, operating, managing, franchising, licensing, dealing directly or indirectly in hotels, restaurant or hospitality services of any manner under the trademark “RENAISSANCE”, and to deliver all the goods, label or any other printed material bearing the impugned mark “SAI RENAISSANCE” or “RENAISSANCE” and for damages amounting to Rs.3,50,000/ for having used its trade mark.
Advocate Viswanathan, appearing for the appellant plaintiff, contended that the test under Sections 29 (1), 29 (2) and 29 (3) of the Trade Marks Act, 1999 would be applicable in the present case, where the class of goods or services is identical or similar.
Advocate Sitarama Rao, appearing on behalf of the respondents defendants, argued that the very suit filed by the appellant plaintiff itself was not maintainable insofar as the appellant plaintiff was not a legal person.
The three judge bench of Justice L. Nageswara Rao, Justice B.R. Gavai and Justice B.V. Nagarathna noted that the words “RENAISSANCE” and “SAI RENAISSANCE” are phonetically as well as visually similar. Subsection (9) of Section 29 of the Act provides that 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.
The court said that the High Court has failed to take into consideration that in order to avail the benefit of Section 30 of the Act, apart from establishing that the use of the impugned trade mark was not such as to take unfair advantage of or is detrimental to the distinctive character or repute of the trade mark.
The court while allowing the appeal quashed and set aside the impugned judgment and order passed by the High Court of Karnataka and maintained the judgment and decree passed by the trial court.
Case title: Renaissance Hotel Holdings Inc. v/s B. Vijaya Sai and Ors.
Citation: CIVIL APPEAL NO. 404 OF 2022