23 一月 2022

Words ‘Renaissance’ and ‘Sai Renaissance’ are phonetically as well as visually similar – Confusion to be presumed in infringement action when marks and goods/services identical

The 3-Judge Bench of the Supreme Court of India has set aside the High Court decision which in turn had set aside the Trial Court decision holding that the ‘Renaissance’ mark of the plaintiff would be eligible for protection under Section 29(2)(c) read with Section 29(3) of the Trade Marks Act, 1999 against use of the mark ‘Sai Renaissance’ by the defendant, for the same hotel and hospitality services. High Court’s reliance on Section 29(4)(c) was rejected by the Supreme Court while observing that Section 29(4) deals with situations where though the trade mark is identical, but the goods or services are not similar to those for which the trade mark is registered.

Observing that both the Trial Court and the High Court had concluded that the trade mark of the defendants was identical with that of the plaintiff and further that the services rendered by the defendants were under the same class, i.e., Class 16 and Class 42, the Court held that it shall presume that it is likely to cause confusion on the part of the public. Reiterating difference between ‘passing off’ and ‘infringement’, the Court noted that in an action for infringement, where the defendant’s trade mark is identical with the plaintiff’s trade mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. 

It also noted that it has been earlier held that if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get­up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark, would be immaterial in a case of infringement of the trade mark, unlike in the case involving passing off.

The Apex Court in its decision in the case Renaissance Hotel Holdings Inc. v B. Vijaya Sai and Others [Judgement dated 19 January 2022] was also of the view that as such, 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 sub­section (9) of Section 29 of the Trade Marks Act. It also observed that for benefit of Section 30(1) [Limits of effect of registered trade mark] of the Trade Marks Act, both the conditions in clauses (a) and (b) need to be satisfied.

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