'Phonetically, visually similar', SC restrains Indian firm from using US hotel chain's brand name

22-01-2022 Sat 21:35 IST | IANS | National
'Phonetically, visually similar', SC restrains Indian firm from using US hotel chain's brand name

New Delhi, Jan 22:  The Supreme Court has said the trade mark of a company may be infringed upon either by spoken use of words or their visual representation, as it decided in favour of a US-based hotel chain, Renaissance, and restrained an India company from using the same word for its hotels.

A bench comprising Justices L. Nageswara Rao, B.R. Gavai and B.V. Nagarathna said: "The words 'Renaissance' and 'Sai Renaissance' are phonetically as well as visually similar. As already discussed, Sub-section (9) of Section 29 of the Trade Marks Act provides that where 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 US company, Renaissance Hotel, fought a legal battle for over 13 years with Sai Renaissance over using the word 'Renaissance'.

Justice Gavai, who authored the judgment on behalf of the bench, said: "The use of the word 'Sai Renaissance', which is phonetically and visually similar to 'Renaissance', would also be an act of infringement in view of the provisions of Sub-section (9) of Section 29 of the said Act."

The top court said that in an infringement action, where the trade mark is identical with a registered trade mark, an injunction be issued as soon as it is proved that the defendant is improperly using the plaintiff's trade mark.

"When the trade mark of the defendant is identical with the registered trade mark of the plaintiff, and that the goods or services of the defendant are identical with the goods or services covered by the registered trade mark, the court shall presume that it is likely to cause confusion on the part of the public," said the bench in its 61-page judgment.

The US hotel chain had moved the trial court against Karnataka-based hotel company Sai Renaissance. The trial court ruled in favour of the US company by refraining the Indian company from using the name, but rejected the claims for damages.

In 2019, the Karnataka High Court observed that there was no infringement of trade mark, and allowed the appeal by the India hotel company and set aside the trial court order passed in June 2012. The US company then challenged the order in the top court.

The Indian firm argued that Renaissance is a generic word and no such exclusive rights can be claimed over it in India, as it is neither a well-known trade mark, nor it has any reputation built up in India.

Upholding the trial court order, the top court said that it was not open for the high court to have entered into the discussion as to whether the appellant plaintiff's trade mark had a reputation in India.

Quashing the high court order, the top court said: "We find that the high court has failed to take into consideration two important principles of interpretation. The first being of textual and contextual interpretation. 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 Indian hotel company had also used the Renaissance branding in bath robes, slippers, shirts, hats, matchboxes, writing paper, candies, etc.

The bench emphasised that no part of a statute and no word of a statute can be construed in isolation, and statutes have to be construed so that every word has a place and everything is in its place.



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