Renaissance Hotel Holdings Inc. vs B. Vijaya Sai

of 2012, thereby allowing the appeal filed by the

respondents­defendants herein and setting aside the

judgement and decree of the Principal District Judge,

Bangalore Rural District, Bangalore (hereinafter referred to

1 as the “trial court”), dated 21st June 2012 passed in O.S. No.

3 of 2009, in favour of the appellant­plaintiff herein.

3. The facts in brief giving rise to the filing of the present

appeal are as under:

The appellant­plaintiff filed a suit being O.S. No. 3 of

2009 before the trial court claiming a decree of permanent

injunction to restrain the respondents­defendants from using

the trade mark “SAI RENAISSANCE” or any other trade mark

identical with the appellant­plaintiff’s trade mark

“RENAISSANCE”, and from opening, operating, managing,

franchising, licensing, dealing directly or indirectly in hotels,

restaurant or hospitality services of any manner under the

trade mark “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.

4. It is the case of the appellant­plaintiff that it is a

company incorporated under the laws of the State of

Delaware, United States of America. It is the further case of

2 the appellant­plaintiff that it is the holder and proprietor of

the trade mark and service mark “RENAISSANCE” in relation

to hotel, restaurant, catering, bar, cocktail lounge, fitness

club, spa services, etc. It is the further case of the appellant­

plaintiff that the trade mark “RENAISSANCE” has also been

used in relation to a wide variety of goods commonly found in

the appellant­plaintiff’s hotels such as bath robes, slippers,

shirts, hats, matchboxes, writing paper, candies, etc. These

products are imprinted with the appellant­plaintiff’s trade

mark “RENAISSANCE”. It is the case of the appellant­plaintiff

that the trade mark “RENAISSANCE” has been used by it for

its hospitality business throughout the world since the year

1981. That it is one of the world’s largest and leading chains

of hotels. That it is using the trade mark “RENAISSANCE” in

India since 1990. It is the case of the appellant­plaintiff that

it also runs a hotel and convention centre in Mumbai and in

Goa. That it also owns a registration for the domain name

www.renaissancehotels.com and spends about US$ 14

million annually for worldwide advertisements and

promotional activities.

3

5. It is the further case of the appellant­plaintiff that it has

the registration for the trade mark and service mark

“RENAISSANCE” in India, under Registration No. 610567 in

Class 16 for “printed matter, periodicals, books, stationery,

manuals, magazines, instructional and teaching materials

and office requisites” and Registration No. 1241271 in Class

42 for “hotel, restaurant, catering, bar and cocktail lounge

services, provisions of facilities for meetings, conferences and

exhibitions, reservation services for hotel accommodations”,

respectively.

6. According to the appellant­plaintiff, it came across a

website at www.sairenaissance.com through which it

discovered that the respondents­defendants were operating

one hotel in Bangalore and another one in Puttaparthi under

the impugned name “SAI RENAISSANCE”, which wholly

incorporates the appellant­plaintiff’s well­known trade mark

and service mark “RENAISSANCE”. The appellant­plaintiff

immediately instructed that an investigation be carried out

and sought legal advice with regard to the violation of its

intellectual property. Upon investigation, it was revealed

4 that the respondents­defendants were running one hotel at

Kadugodi, near Whitefield Railway Station, Bangalore and

another one at By­Pass Road, Puttaparthi. It was further

revealed that the respondents­defendants were copying

appellant­plaintiff’s trade mark “RENAISSANCE”, its stylized

representation, signage and business cards and leaflets. It is

the case of the appellant­plaintiff that this was done in such

a manner so as to suggest an affiliation, association, nexus

or connection with the business of the appellant­plaintiff.

The appellant­plaintiff, therefore, claimed infringement of its

registered trade mark “RENAISSANCE” in Class 16 and Class

42. The appellant­plaintiff further contended that a similar

suit instituted by it at Kochi being C.S. No. 5 of 2005 before

the District Court at Ernakulam was decreed in its favour

vide judgment dated 31st January 2008.

7. The respondents­defendants resisted the claim of the

appellant­plaintiff by filing their written statement. It was

contended that the suit was liable to be dismissed on

account of delay, laches and acquiescence. It was further

contended that “RENAISSANCE” is a generic word and no

5 such exclusive rights can be claimed over it in India as it is

neither a well­known mark, nor it has any reputation built

up by the appellant­plaintiff. It is the case of the

respondents­defendants that they are ardent devotees of Sri

Shirdi Sai Baba and Sri Puttaparthi Sai Baba. It is the belief

of all the devotees of Sri Sai Baba including the first

respondent­defendant that Sri Puttaparthi Sai Baba is the

reincarnation of Sri Shirdi Sai Baba and therefore, the first

respondent­defendant used the dictionary word

“RENAISSANCE” after the name of Sri Shirdi Sai Baba and

adopted the name “SAI RENAISSANCE”. It is the case of the

first respondent­defendant that he has been running the

hotel for the last 15 years. According to the first respondent­

defendant, the hotel at Kadugodi near Whitefield was

established in the year 2001 near the Ashram of Sri Sai

Baba. It is the case of the first respondent­defendant that

the hotel was established so as to provide facilities to the

devotees of Sri Sai Baba. The respondents­defendants further

submitted that even the first respondent­defendant was not

aware that the appellant­plaintiff had established any such

6 hotel by incorporating the word “RENAISSANCE” in its name

till he received suit summons in the said case.

8. It is contended by the respondents­defendants that the

word “RENAISSANCE” is commonly found in the dictionary

and is used by a large number of people and therefore, the

trade mark “RENAISSANCE” has not become distinctive with

the appellant­plaintiff as claimed by it. It is submitted by the

respondents­defendants that “RENAISSANCE” is neither a

coined word nor an inventive mark. It is further the case of

the respondents­defendants that the appellant­plaintiff’s

mark “RENAISSANCE” registered under Class 42 is subject

to rectification proceedings, and as such, the appellant­

plaintiff cannot claim that they are the registered proprietors

of the said trade mark “RENAISSANCE”.

9. It is the further case of the respondents­defendants that

the class of customers to which they were catering was

totally different from the class of customers to which the

appellant­plaintiff was catering. It is their case that the

services provided by them and the appellant­plaintiff were

also totally different. It was contended that the respondents­

7 defendants did not provide non­vegetarian food and alcoholic

drinks to its customers. It was therefore contended that

there was no possibility of confusion being created in the

minds of the customers that the hotel of the respondents­

defendants belonged to or was affiliated to the appellant­

plaintiff.

10. The trial court framed the following issues:

“1. Whether the Plaintiff is the registered proprietor of the trade mark/service mark “RENAISSANCE” under the Trade Mark Act 1999?

2. Whether the plaintiff is the proprietor of trade mark/service mark “Renaissance” on account of prior adoption and use in relation to hotels and hospitality business?

3. Whether the plaintiff proves that the defendant is infringing the trade mark of the plaintiff?

4. Whether the plaintiff proves that the action of defendant is one of passing off?

5. Whether the plaintiff is entitled to an order for delivery of goods, labels or any other printed materials?

6. Whether plaintiff is entitled for rendition of accounts and damages?

7. To what reliefs and decree the parties are entitled for?

Additional Issues

8

1. Whether the suit is not maintainable for want of signing and verification of the plaint by person having locus standi?

2. Whether the defendants prove that they have been honestly and continuously using the trade mark Hotel SAIRenaissance?”

11. The trial court answered the aforesaid issues as under:

“12. My answer to the above issues are as under:

Issue No.1: Affirmative Issue No.2: Affirmative Issue No.3: Affirmative Issue No.4: Negative Issue No.5: Negative Issue No.6: negative Additional Issue Affirmative No.1: Additional Issue does not arise for No.2: consideration”

12. The trial court after considering the evidence on record

and contentions raised on behalf of the parties, partly

decreed the suit by restraining the respondents­defendants

from using the trade mark “SAI RENAISSANCE” or any other

trade mark which incorporates the appellant­plaintiff’s trade

mark “RENAISSANCE” or is deceptively similar thereto in

relation to or upon printed matter, periodicals, books,

instructional and teaching materials, stationery, manuals,

9 magazines and office requisites amounting to infringement of

the appellant­plaintiff’s registered trade mark No. 610567 in

Class 16 and for hotel, restaurant, catering, bar and cocktail

lounge services, provision of facilities for meetings,

conferences and exhibitions, reservation services for hotel

accommodations amounting to infringement of the appellant­

plaintiff’s registered trade mark No. 1241271 in Class 42.

The trial court further restrained the respondents­defendants

from opening, operating, managing, franchising, licensing,

dealing directly or indirectly in hotels, restaurant, or

hospitality services of any manner under the trade mark or

service mark “RENAISSANCE” or any deceptively similar

mark “RENAISSANCE” or any deceptively similar mark

including on the internet as a domain name

www.sairenaissance.com or in any manner so as to pass off

their services as those of or concocted with the appellant­

plaintiff. The trial court, however, rejected the claim of the

appellant­plaintiff for damages. Being aggrieved thereby, the

respondents­defendants appealed before the High Court.

10

13. The High Court observed that the evidence produced by

the appellant­plaintiff did not disclose that a trans­border

reputation was earned by it to uphold its plea in that regard.

The High Court further observed that the appellant­plaintiff

is a 5 Star hotel but the respondents­defendants’ hotel is not

of that standard. The High Court further observed that no

evidence was produced by the appellant­plaintiff to show that

the respondents­defendants were taking unfair advantage of

its trade mark or that the use of the word “SAI

RENAISSANCE” was detrimental to the distinctive character

or reputation of the appellant­plaintiff’s trade mark.

14. Insofar as the judgment of the Kerala High Court in the

case of M/s The RENAISSANCE, Cochin v. M/s

RENAISSANCE Hotels Inc. Marriotr1 in which injunction

was granted in favour of the plaintiff against the Hotel

(RENAISSANCE, COCHIN) is concerned, the High Court

observed that the said judgment was not applicable to the

facts of the present case. It was observed that in the said

case, one of the customers had claimed that he was misled to

1 RFA No. 235 of 2008 dated 28th April, 2009 11 believe that “The RENAISSANCE, COCHIN” was a part of the

plaintiff’s hotel chain and therefore, he resided there. The

High Court observed that in the present case, none of the

customers had made such a claim. It further observed that

the witness of the appellant­plaintiff had admitted that the

respondents­defendants serve only vegetarian food without

liquor and that he had no idea that the respondents­

defendants had established two hotels exclusively for serving

the devotees of Satya Sai Baba at Puttaparthi and

Bengaluru, respectively. The High Court further observed

that the evidence on record shows that the respondents­

defendants have not taken unfair advantage, or that its

existence was detrimental to the distinctive character or

reputation of the appellant­plaintiff’s trade mark. The High

Court, therefore, observed that there was no infringement of

trade mark, and as such, allowed the appeal filed by the

respondents­defendants herein by setting aside the

judgement and decree dated 21 st June 2012 passed by the

trial court and dismissed the suit. Being aggrieved thereby,

the appellant­plaintiff has approached this Court.

12

15. We have heard Shri K.V. Viswanathan, learned Senior

Counsel appearing on behalf of the appellant­plaintiff and

Shri B.C. Sitarama Rao, learned counsel appearing on behalf

of the respondents­defendants.

16. Shri Viswanathan submitted that the test under

Sections 29(1), 29(2) and 29(3) of the Trade Marks Act, 1999

(hereinafter referred to as the “said Act”) would be applicable

in the present case, where the class of goods or services is

identical or similar. He submitted that, however, the High

Court has grossly erred in applying the test as provided

under Section 29(4) of the said Act. The learned Senior

Counsel submitted that the High Court has further erred in

only referring to the condition stipulated in clause (c) of

Section 29(4) of the said Act. He submitted that Section

29(4) of the said Act would be applicable only if all the three

conditions specified therein are satisfied. The learned Senior

Counsel further submitted that the High Court has also

failed to take into consideration that since the respondents­

defendants were using the appellant­plaintiff’s registered

trade mark “RENAISSANCE” as a part of their trade name for

13 the hotels and as a part of the name of their business

concern, it squarely falls under sub­section (5) of Section 29

of the said Act and therefore, the respondents­defendants

were liable for infringement of registered trade mark.

17. Shri Viswanathan further submitted that merely

because the respondents­defendants were using the prefix

“SAI” before the registered trade mark of the appellant­

plaintiff, it would not save them from an action for

infringement of the registered trade mark. He further

submitted that the High Court, even after observing that the

appellant­plaintiff was a prior user and registered proprietor

in respect of the mark “RENAISSANCE” and having held that

the respondents­defendants had adopted and had been using

the registered trade mark of the appellant­plaintiff

“RENAISSANCE” along with the prefix “SAI” and that both of

them are in the hotels and hospitality business, has totally

erred in holding that there was no infringement of the

appellant­plaintiff’s trade mark. The learned Senior Counsel

in support of this proposition, relies on the judgment of this

14 Court in the case of Laxmikant V. Patel v. Chetanbhai

Shah and Another2.

18. Shri Viswanathan further submitted that the test of

deception or confusion has been wrongly applied by the High

Court inasmuch as, in an action for infringement, where the

respondents­defendants’ trade mark is identical with the

appellant­plaintiff’s trade mark, such a test would not be

applicable. In support of this proposition, he relies on the

judgment of this Court in the case of Ruston & Hornsby

Limited v. Zamindara Engineering Co.3.

19. Shri Viswanathan submitted that in an action for

infringement, where the similarity between the plaintiff’s and

the defendant’s mark is close either visually, phonetically or

otherwise, and once it is found by the Court that there is an

imitation, no further evidence is required to establish that

the plaintiff’s rights are violated. Reliance in this respect is

placed on the judgment of this Court in the case of Kaviraj

2 (2002) 3 SCC 65 3 (1969) 2 SCC 727

15 Pandit Durga Dutt Sharma v. Navaratna

Pharmaceutical Laboratories4.

20. The learned Senior Counsel further submitted that the

High Court, while reversing the judgement and decree passed

by the trial court, has not applied the law correctly, as laid

down by this Court in the case of Midas Hygiene Industries

(P) Limited and Another v. Sudhir Bhatia and Others5.

21. Shri Sitarama Rao, learned counsel appearing on behalf

of the respondents­defendants, submitted that the very suit

filed by the appellant­plaintiff itself was not maintainable

inasmuch as the appellant­plaintiff was not a legal person. It

is further submitted that “RENAISSANCE” is a generic

English word and the appellant­plaintiff cannot claim

monopoly of the same. He submitted that the respondent

No. 1 was named “Vijaya Sai” by his parents as they believed

that he was born as a result of the prayers made to Sri Sai

Baba. It is further submitted that “RENAISSANCE” means

“re­birth” and that the name “SAI RENAISSANCE” was

4 [1965] 1 SCR 737 5 (2004) 3 SCC 90

16 adopted for his hotel to signify the birth of Sri Puttaparthi Sai

Baba as a reincarnation of Sri Shirdi Sai Baba and that the

use of mark “SAI RENAISSANCE” amounts to honest

concurrent use under Section 12 of the said Act. He further

submitted that the appellant­plaintiff acquiesced to the

respondents­defendants’ use of the mark inasmuch as the

suit came to be filed after a long time gap.

22. Shri Sitarama Rao submitted that the High Court has

rightly held that the respondents­defendants’ use was honest

and that the reasoning given by them for adopting the word

“SAI RENAISSANCE” was justifiable. He further submitted

that the High Court has rightly held that the class of

customers to which the appellant­plaintiff and the

respondents­defendants were catering was totally different,

and as such, had rightly allowed the appeal and dismissed

the suit.

23. The learned counsel appearing on behalf of the

respondents­defendants relies on the judgments of this Court

in the cases of Khoday Distilleries Limited (Now known

as Khoday India Limited) v. Scotch Whisky Association

17 and Others6, Nandhini Deluxe v. Karnataka Cooperative

Milk Producers Federation Limited7, Corn Products

Refining Co. v. Shangrila Food Products Limited8 and

Neon Laboratories Limited v. Medical Technologies

Limited and Others9.

24. Shri Viswanathan, in rejoinder, has placed certain

documents on record to show that the respondents­

defendants have already discontinued the use of the term

“RENAISSANCE” from the name of their hotel, signage, etc.,

and as such, accepted that their use of the term

“RENAISSANCE” amounted to infringement of the appellant­

plaintiff’s trade mark.

25. For appreciation of the rival controversy, it will be

appropriate to briefly refer to the legislative scheme with

regard to the trade mark laws.

26. On the day when India attained independence, the law

with regard to registration and effective protection of trade

6 (2008) 10 SCC 723 7 (2018) 9 SCC 183 8 [1960] 1 SCR 968 9 (2016) 2 SCC 672

18 marks was governed by The Trade Marks Act, 1940

(hereinafter referred to as the “1940 Act”). Section 21 of the

1940 Act provided for the right conferred by registration and

the exclusive right to use of the trade mark to the registered

proprietor of the trade mark and infringement thereof.

Section 21 of the 1940 Act reads thus:

“21. Right conferred by registration.— (1) Subject to the provisions of Sections 22, 25 and 26, the registration of a person in the register as proprietor of a trade mark in respect of any goods shall give to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing provision, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either—

(a) as being used as a trade mark; or

(b) to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade.”

19

27. The legislature noticed that the 1940 Act was enacted

prior to attaining independence, and after attaining

independence, the development in the field of commerce and

industry was quite rapid, and it was found that the law

relating to trade marks was not adequate enough to meet the

growing demands. Accordingly, The Trade and Merchandise

Marks Act, 1958 (hereinafter referred to as the “1958 Act”)

was enacted. Section 29 of the 1958 Act dealt with the

infringement of trade marks, which reads thus:

“29. Infringement of trade marks.—(1) A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of a trade mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

(2) In an action for infringement of a trade mark registered in Part B of the register an injunction or other relief shall not be granted to the plaintiff if the defendant establishes to the satisfaction of the court that the use of the mark of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods in respect of which the trade mark is registered and some person having the right, either as registered proprietor or as registered user, to use the trade mark.”

20

28. Thereafter, in view of the developments in trading and

commercial practices, increasing globalization of trade and

industry, the need to encourage investment flows and

transfer of technology, and the need for simplification and

harmonization of trade mark management systems, it was

found necessary by the Parliament to repeal the 1958 Act

and enact a new Act, i.e., the said Act. It will be relevant to

refer to the Statement of Objects and Reasons of the said Act:

“The Trade and Merchandise Marks Act, 1958 has served its purpose over the last four decades. It was felt that a comprehensive review of the existing law be made in view of developments in trading and commercial practices, increasing globalization of trade and industry, the need to encourage investment flows and transfer of technology, need for simplification and harmonization of trade mark management systems and to give effect to important judicial decisions. To achieve these purposes, the present Bill proposes to incorporate, inter alia the following, namely:­ …..

(j) prohibiting use of someone else’s trade marks as part of corporate names, or name of business concern;

……”

21

29. The Trade Marks Bill of 1999 was passed by both the

Houses of Parliament and the assent of the President was

received on 30th December 1999. It came into force on 15 th

September 2003. It will be relevant to refer to Sections 28

and 29 of the said Act:

“28. Rights conferred by registration.—(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.

(2) The exclusive right to the use of a trade mark given under sub­section (1) shall be subject to any conditions and limitations to which the registration is subject.

(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.

29. Infringement of registered trade marks.—(1) A registered trade mark is infringed by a person

22 who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of—

(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

(3) In any case falling under clause (c) of sub­ section (2), the court shall presume that it is likely to cause confusion on the part of the public. (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which—

(a) is identical with or similar to the registered trade mark; and

23

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered. (6) For the purposes of this section, a person uses a registered mark, if, in particular, he—

(a) affixes it to goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;

(c) imports or exports goods under the mark; or

(d) uses the registered trade mark on business papers or in advertising.

(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.

24 (8) A registered trade mark is infringed by any advertising of that trade mark if such advertising—

(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

(b) is detrimental to its distinctive character; or

(c) is against the reputation of the trade mark.

(9) 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 and reference in this section to the use of a mark shall be construed accordingly.”

30. Sub­section (1) of Section 28 of the said Act provides

that subject to the other provisions of the said Act, the

registration of a trade mark shall, if valid, give to the

registered proprietor of the trade mark the exclusive right to

the use of the trade mark in relation to the goods or services

in respect of which the trade mark is registered and to obtain

relief in respect of infringement of the trade mark in the

manner provided by the said Act. Sub­section (2) of Section

28 of the said Act provides that the exclusive right to the use

of a trade mark given under sub­section (1) of Section 28 of

the said Act shall be subject to any conditions and

25 limitations to which the registration is subject. The

provisions of sub­section (3) of Section 28 of the said Act

would not be relevant for the purpose of the present case.

31. Sub­section (1) of Section 29 of the said Act provides

that a registered trade mark is infringed by a person who,

not being a registered proprietor or a person using by way of

permitted use, uses in the course of trade, a mark which is

identical with, or deceptively similar to, the trade mark in

relation to goods or services in respect of which the trade

mark is registered and in such manner as to render the use

of the mark likely to be taken as being used as a trade mark.

Sub­section (2) of Section 29 of the said Act provides that a

registered trade mark is infringed by a person who, not being

a registered proprietor or a person using by way of permitted

use, uses in the course of trade, a mark which because of its

identity with the registered trade mark and the similarity of

the goods or services covered by such registered trade mark;

or its similarity to the registered trade mark and the identity

or similarity of the goods or services covered by such

registered trade mark; or its identity with the registered trade

26 mark and the identity of the goods or services covered by

such registered trade mark, is likely to cause confusion on

the part of the public, or which is likely to have an

association with the registered trade mark. Sub­section (3) of

Section 29 of the said Act is of vital importance. It provides

that in any case falling under clause (c) of sub­section (2) of

Section 29 of the said Act, the court shall presume that it is

likely to cause confusion on the part of the public.

32. A perusal of sub­section (2) of Section 29 of the said Act

would reveal that a registered trade mark would be infringed

by a person, who not being a registered proprietor or a

person using by way of permitted use, uses in the course of

trade, a mark which because of the three eventualities

mentioned in clauses (a), (b) and (c), is likely to cause

confusion on the part of the public, or which is likely to have

an association with the registered trade mark. The first

eventuality covered by clause (a) being its identity with the

registered trade mark and the similarity of the goods or

services covered by such registered trade mark. The second

one covered by clause (b) being its similarity to the registered

27 trade mark and the identity or similarity of the goods or

services covered by such registered trade mark. The third

eventuality stipulated in clause (c) would be its identity with

the registered trade mark and the identity of the goods or

services covered by such registered trade mark.

33. It is, however, pertinent to note that by virtue of sub­

section (3) of Section 29 of the said Act, the legislative intent

insofar as the eventuality contained in clause (c) is

concerned, is clear. Sub­section (3) of Section 29 of the said

Act provides that in any case falling under clause (c) of sub­

section (2) of Section 29 of the said Act, the Court shall

presume that it is likely to cause confusion on the part of the

public.

34. Sub­section (4) of Section 29 of the said Act provides

that a registered trade mark is infringed by a person who,

not being a registered proprietor or a person using by way of

permitted use, uses in the course of trade, a mark which is

identical with or similar to the registered trade mark; and is

used in relation to goods or services which are not similar to

those for which the trade mark is registered; and the

28 registered trade mark has a reputation in India and the use

of the mark without due cause takes unfair advantage of or

is detrimental to, the distinctive character or repute of the

registered trade mark.

35. Sub­section (5) of Section 29 of the said Act provides

that a registered trade mark is infringed by a person if he

uses such registered trade mark, as his trade name or part of

his trade name, or name of his business concern or part of

the name, of his business concern dealing in goods or

services in respect of which the trade mark is registered.

36. Sub­section (6) of Section 29 of the said Act provides

that for the purposes of this section, a person uses a

registered mark, if, in particular, he affixes it to goods or the

packaging thereof; offers or exposes goods for sale, puts them

on the market, or stocks them for those purposes under the

registered trade mark, or offers or supplies services under

the registered trade mark; imports or exports goods under

the mark; or uses the registered trade mark on business

papers or in advertising.

29

37. Sub­section (7) of Section 29 of the said Act provides

that a registered trade mark is infringed by a person who

applies such registered trade mark to a material intended to

be used for labelling or packaging goods, as a business

paper, or for advertising goods or services, provided such

person, when he applied the mark, knew or had reason to

believe that the application of the mark was not duly

authorized by the proprietor or a licensee.

38. Sub­section (8) of Section 29 of the said Act provides

that a registered trade mark is infringed by any advertising of

that trade mark if such advertising takes unfair advantage of

and is contrary to honest practices in industrial or

commercial matters; or is detrimental to its distinctive

character; or is against the reputation of the trade mark.

39. Sub­section (9) of Section 29 of the said 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

30 representation and reference in this section to the use of a

mark shall be construed accordingly.

40. Section 30 of the said Act deals with the limits on effect of registered trade mark. Section 30 of the said Act, which

would also be of vital importance in the present case, reads

thus:

“30. Limits on effect of registered trade mark.— (1) Nothing in Section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use —

(a) is in accordance with honest practices in industrial or commercial matters, and

(b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.

(2) A registered trade mark is not infringed where—

(a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services;

(b) a trade mark is registered subject to any conditions or limitations, the use of the trade mark in any manner in relation to goods to be sold or otherwise traded in, in any place, or in relation to goods to be

31 exported to any market or in relation to services for use or available or acceptance in any place or country outside India or in any other circumstances, to which, having regard to those conditions or limitations, the registration does not extend;

(c) the use by a person of a trade mark—

(i) in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk or which they form part, the registered proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark; or

(ii) in relation to services to which the proprietor of such mark or of a registered user conforming to the permitted use has applied the mark, where the purpose and effect of the use of the mark is to indicate, in accordance with the fact, that those services have been performed by the proprietor or a registered user of the mark;

(d) the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given by registration under this Act or might for

32 the time being be so used, if the use of the trade mark is reasonably necessary in order to indicate that the goods or services are so adapted, and neither the purpose nor the effect of the use of the trade mark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods or services, as the case may be;

(e) the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act.

(3) Where the goods bearing a registered trade mark are lawfully acquired by a person, the sale of the goods in the market or otherwise dealing in those goods by that person or by a person claiming under or through him is not infringement of a trade by reason only of*—

(a) the registered trade mark having been assigned by the registered proprietor to some other person, after the acquisition of those goods; or

(b) the goods having been put on the market under the registered trade mark by the proprietor or with his consent. (4) Sub­section (3) shall not apply where there exists legitimate reasons for the proprietor to oppose further dealings in the goods in particular, where the condition of the goods, has been changed or impaired after they have been put on the market.”

33

41. Section 31 of the said Act is also relevant in the present

case, which reads thus:

“31. Registration to be prima facie evidence of validity.—(1) In all legal proceedings relating to a trade mark registered under this Act (including applications under Section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof. (2) In all legal proceedings, as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registrable trade mark under Section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration.”

42. It could thus be seen that in all legal proceedings

relating to trade mark registered under the said Act, the

original registration of the trade mark and of all subsequent

assignments and transmissions of the trade mark shall be

prima facie evidence of the validity thereof.

43. The legislative scheme is clear that when the mark of

the defendant is identical with the registered trade mark of

the plaintiff and the goods or services covered are similar to

34 the ones covered by such registered trade mark, it may be

necessary to prove that it is likely to cause confusion on the

part of the public, or which is likely to have an association

with the registered trade mark. Similarly, when the trade

mark of the plaintiff is similar to the registered trade mark of

the defendant and the goods or services covered by such

registered trade mark are identical or similar to the goods or

services covered by such registered trade mark, it may again

be necessary to establish that it is likely to cause confusion

on the part of the public. However, 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 registered

trade mark, the Court shall presume that it is likely to cause

confusion on the part of the public.

44. Having considered the legislative scheme as has been

elaborately provided in the said Act, it will be apposite to

refer to the observations of this Court, while considering

Section 21 of The Trade Marks Act, 1940 in the case of

Kaviraj Pandit Durga Dutt Sharma (supra):

35

“28. The other ground of objection that the findings are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a registered trade mark and in equating the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark. We have already pointed out that the suit by the respondent complained both of an invasion of a statutory right under Section 21 in respect of a registered trade mark and also of a passing off by the use of the same mark. The finding in favour of the appellant to which the learned counsel drew our attention was based upon dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in the colour and other features and their general get­up together with the circumstance that the name and address of the manufactory of the appellant was prominently displayed on his packets and these features were all set out for negativing the respondent's claim that the appellant had passed off his goods as those of the respondent. These matters which are of the essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy for the event of the use by another of that mark or a colourable imitation thereof. While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the

36 trade mark in relation to those goods” (Vide Section 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated.

Expressed in another way, 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; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.”

45. It could thus be seen that this Court has pointed out

the distinction between the causes of action and right to

relief in suits for passing off and for infringement of

37 registered trade mark. It has been held that the essentials of

a passing off action with those in respect of an action

complaining of an infringement of a registered trade mark,

cannot be equated. It has been held that though an action

for passing off is a Common Law remedy being an action for

deceit, that is, a passing off by a person of his own goods as

those of another; the action for infringement is a statutory

right conferred on the registered proprietor of a registered

trade mark for the vindication of the exclusive rights to the

use of the trade mark in relation to those goods. The use by

the defendant of the trade mark of the plaintiff is a sine qua

non in the case of an action for infringement. It has further

been 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, whereas in the case of a passing off, the defendant

38 may escape liability if he can show that the added matter is

sufficient to distinguish his goods from those of the plaintiff.

46. Again, while considering the provisions of Section 21 of the 1940 Act, this Court in the case of Ruston & Hornsby

Limited (supra), observed thus:

“4. It very often happens that although the defendant is not using the trade mark of the plaintiff, the get up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiff's mark the get up of the defendant's goods may be so different from the get up of the plaintiff's goods and the prices also may by so different that there would be no probability of deception of the public. Nevertheless, in an action on the trade mark, that is to say, in an infringement action, an injunction would issue as soon as it is proved that the defendant is improperly using the plaintiff's mark.

5. The action for infringement is a statutory right. It is dependent upon the validity of the registration and subject to other restrictions laid down in Sections 30, 34 and 35 of the Act. On the other hand the gist of a passing off action is that A is not entitled to represent his goods as the goods of B but it is not necessary for B to prove that A did this knowingly or with any intent to deceive. It is enough that the get­up of B's goods has become distinctive of them and that there is a probability of confusion between them and the goods of A. No case of actual deception nor any actual damage need be proved. At common law the action was not maintainable

39 unless there had been fraud on A's part. In equity, however, Lord Cottenham, L.C., in Millington v. Fox [3 My & Cr 338] held that it was immaterial whether the defendant had been fraudulent or not in using the plaintiff's trade mark and granted an injunction accordingly. The common law courts, however, adhered to their view that fraud was necessary until the Judicature Acts, by fusing law and equity, gave the equitable rule the victory over the common law rule.

6. The two actions, however, are closely similar in some respects. As was observed by the Master of the Rolls in Saville Perfumery Ltd. v. June Perfect Ltd. [58 RPC 147 at 161] :

“The statute law relating to infringement of trade marks is based on the same fundamental idea as the law relating to passing­off. But it differs from that law in two particulars, namely (1) it is concerned only with one method of passing­off, namely, the use of a trade mark, and (2) the statutory protection is absolute in the sense that once a mark is shown to offend, the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his goods from those of the registered proprietor. Accordingly, in considering the question of infringement the Courts have held, and it is now expressly provided by the Trade Marks Act, 1938, Section 4, that infringement takes place not merely by exact imitation but by the use of a mark so nearly resembling the registered mark as to be likely to deceive.””

40

47. It could thus be seen that this Court again reiterated

that the question to be asked in an infringement action is as

to whether the defendant is using a mark which is same as,

or which is a colourable imitation of the plaintiff’s registered

trade mark. It has further been held that though the get up

of the defendant’s goods may be so different from the

plaintiff’s goods and the prices may also be so different that

there would be no probability of deception of the public,

nevertheless even in such cases, i.e., in an infringement

action, an injunction would be issued as soon as it is proved

that the defendant is improperly using the plaintiff’s mark. It

has been reiterated that no case of actual deception nor any

actual damage needs to be proved in such cases. This Court

has further held that though two actions are closely similar

in some respects, 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.

41

48. In the present case, both the trial court and the High

Court have come to the conclusion that the trade mark of the

respondents­defendants is identical with that of the

appellant­plaintiff and further that the services rendered by

the respondents­defendants are under the same class, i.e.,

Class 16 and Class 42, in respect of which the appellant­

plaintiff’s trade mark “RENAISSANCE” was registered. In

such circumstances, the trial court had rightly held that the

goods of the appellant­plaintiff would be covered by Section

29(2)(c) read with Section 29(3) of the said Act.

49. However, the High Court, while reversing the decree of

injunction granted by the trial court, has held that the

appellant­plaintiff had failed to establish that the trade mark

has reputation in India and that the respondents­defendants’

use thereof was honest and further that there was no

confusion likely to be created in the minds of the consumers

inasmuch as the class of consumers was totally different. It

appears that the High Court has relied only on clause (c) of

sub­section (4) of Section 29 of the said Act to arrive at such

a conclusion.

42

50. We find that the High Court has totally erred in taking into consideration only clause (c) of sub­section (4) of Section

29 of the said Act. It is to be noted that, whereas, the

legislature has used the word ‘or’ after clauses (a) and (b) in

sub­section (2) of Section 29 of the said Act, it has used the

word ‘and’ after clauses (a) and (b) in sub­section (4) of

Section 29 of the said Act. It could thus be seen that the

legislative intent is very clear. Insofar as sub­section (2) of

Section 29 of the said Act is concerned, it is sufficient that

any of the conditions as provided in clauses (a), (b) or (c) is

satisfied.

51. It is further clear that in case of an eventuality covered under clause (c) of sub­section (2) of Section 29 in view of the

provisions of sub­section (3) of Section 29 of the said Act, the

Court shall presume that it is likely to cause confusion on

the part of the public.

52. The perusal of sub­section (4) of Section 29 of the said Act would reveal that the same deals with an eventuality

when the impugned trade mark is identical with or similar to

43 the registered trade mark and is used in relation to goods or

services which are not similar to those for which the trade

mark is registered. Only in such an eventuality, it will be

necessary to establish that the registered trade mark has a

reputation in India and the use of the mark without due

cause takes unfair advantage of or is detrimental to, the

distinctive character or repute of the registered trade mark.

The legislative intent is clear by employing the word “and”

after clauses (a) and (b) in sub­section (4) of Section 29 of the

said Act. Unless all the three conditions are satisfied, it will

not be open to the proprietor of the registered trade mark to

sue for infringement when though the impugned trade mark

is identical with the registered trade mark, but is used in

relation to goods or services which are not similar to those

for which the trade mark is registered. To sum up, while

sub­section (2) of Section 29 of the said Act deals with those

situations where the trade mark is identical or similar and

the goods covered by such a trade mark are identical or

similar, sub­section (4) of Section 29 of the said Act deals

with situations where though the trade mark is identical, but

44 the goods or services are not similar to those for which the

trade mark is registered.

53. Undisputedly, the appellant­plaintiff’s trade mark

“RENAISSANCE” is registered in relation to goods and

services in Class 16 and Class 42 and the mark “SAI

RENAISSANCE”, which is identical or similar to that of the

appellant­plaintiff’s trade mark, was being used by the

respondents­defendants in relation to the goods and services

similar to that of the appellant­plaintiff’s.

54. In these circumstances, we are of the considered view

that it was not open for the High Court to have entered into

the discussion as to whether the appellant­plaintiff’s trade

mark had a reputation in India and the use of the mark

without due cause takes unfair advantage of or is

detrimental to, the distinctive character or repute of the

registered trade mark. We find that the High Court has erred

in entering into the discussion as to whether the

respondents­defendants and the appellant­plaintiff cater to

different classes of customers and as to whether there was

45 likely to be confusion in the minds of consumers with regard

to the hotel of the respondents­defendants belonging to the

same group as of the appellant­plaintiff’s. As held by this

Court in the case of Ruston & Hornsby Limited (supra), in

an action for infringement, once it is found that the

defendant’s trade mark was identical with the plaintiff’s

registered trade mark, the Court could not have gone into an

enquiry whether the infringement is such as is likely to

deceive or cause confusion. In an infringement action, an

injunction would be issued as soon as it is proved that the

defendant is improperly using the trade mark of the plaintiff.

55. It is not in dispute that the appellant­plaintiff’s trade

mark “RENAISSANCE” is registered under Class 16 and

Class 42, which deals with hotels and hotel related services

and goods. It is also not in dispute that the mark and the

business name “SAI RENAISSANCE”, which was being used

by the respondents­defendants, was also in relation to Class

16 and Class 42. As such, the use of the word

“RENAISSANCE” by the respondents­defendants as a part of

46 their trade name or business concern, would squarely be hit

by sub­section (5) of Section 29 of the said Act.

56. It is further to be noted that the words “RENAISSANCE”

and “SAI RENAISSANCE” are phonetically as well as visually

similar. As already discussed hereinabove, sub­section (9) of

Section 29 of the said 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. 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 said Act.

57. It is pertinent to note that, the High Court has relied on Section 30(1)(b) of the said Act in paragraph (18) of the

impugned judgment. It will be relevant to refer to paragraph

(18), which reads thus:

“18. Section 30(1)(b) of the Act has also contextual application. This Section reads as follows:­

“30. Limits of effect of registered trade mark.­ (1) Nothing in section 29 47 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use­

(a) xxxxxxxxxxx

(b)is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.””

58. The glaring mistake that has been committed by the

High Court is the failure to notice the following part of

Section 30(1) of the said Act:

“(a) is in accordance with honest practices in industrial or commercial matters, and”

59. The perusal of Section 30(1) of the said Act would reveal that for availing the benefit of Section 30 of the said Act, it is

required that the twin conditions, i.e., the use of the

impugned trade mark being in accordance with the honest

practices in industrial or commercial matters, and that such

a use is not such as to take unfair advantage of or be

detrimental to the distinctive character or repute of the trade

mark, are required to be fulfilled. It is again to be noted that

48 in sub­section (1) of Section 30 of the said Act, after clause

(a), the word used is ‘and’, like the one used in sub­section

(4) of Section 29 of the said Act, in contradistinction to the

word ‘or’ used in sub­section (2) of Section 29 of the said Act.

The High Court has referred only to the condition stipulated

in clause (b) of sub­section (1) of Section 30 of the said Act

ignoring the fact that, to get the benefit of sub­section (1) of

Section 30 of the said Act, both the conditions had to be

fulfilled. Unless it is established that such a use is in

accordance with the honest practices in industrial or

commercial matters, and is not to take unfair advantage or is

not detrimental to the distinctive character or repute of the

trade mark, one could not get benefit under Section 30(1) of

the said Act. As such, the finding in this regard by the High

Court is also erroneous.

60. We find that the High Court has failed to take into

consideration two important principles of interpretation. The

first one being of textual and contextual interpretation. It

will be apposite to refer to the guiding principles, succinctly

summed up by Chinnappa Reddy, J., in the judgment of this

49 Court in the case of Reserve Bank of India v. Peerless

General Finance and Investment Co. Ltd. and Others10:

“33. Interpretation must depend on the text and the context. They are the bases of interpretation. One may well say if the text is the texture, context is what gives the colour. Neither can be ignored. Both are important. That interpretation is best which makes the textual interpretation match the contextual. A statute is best interpreted when we know why it was enacted. With this knowledge, the statute must be read, first as a whole and then section by section, clause by clause, phrase by phrase and word by word. If a statute is looked at, in the context of its enactment, with the glasses of the statute­maker, provided by such context, its scheme, the sections, clauses, phrases and words may take colour and appear different than when the statute is looked at without the glasses provided by the context. With these glasses we must look at the Act as a whole and discover what each section, each clause, each phrase and each word is meant and designed to say as to fit into the scheme of the entire Act. No part of a statute and no word of a statute can be construed in isolation. Statutes have to be construed so that every word has a place and everything is in its place. It is by looking at the definition as a whole in the setting of the entire Act and by reference to what preceded the enactment and the reasonsfor it that the Court construed the expression “Prize Chit” in Srinivasa [(1980) 4 SCC 507 : (1981) 1 SCR 801 : 51 Com Cas 464] and we find no reason to depart from the Court's construction.”

10 (1987) 1 SCC 424

50

61. 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 Act must be

looked at as a whole and it must be discovered what each

section, each clause, each phrase and each word is meant

and designed to say as to fit into the scheme of the entire

Act. No part of a statute and no word of a statute can be

construed in isolation. Statutes have to be construed so that

every word has a place and everything is in its place. As

already discussed hereinabove, the said Act has been

enacted by the legislature taking into consideration the

increased globalization of trade and industry, the need to

encourage investment flows and transfer of technology, and

the need for simplification and harmonization of trade mark

management systems. One of the purposes for which the

said Act has been enacted is prohibiting the use of someone

else’s trade mark as a part of the corporate name or the

name of business concern. If the entire scheme of the Act is

construed as a whole, it provides for the rights conferred by

registration and the right to sue for infringement of the

51 registered trade mark by its proprietor. The legislative

scheme as enacted under the said statute elaborately

provides for the eventualities in which a proprietor of the

registered trade mark can bring an action for infringement of

the trade mark and the limits on effect of the registered trade

mark. By picking up a part of the provisions in sub­section

(4) of Section 29 of the said Act and a part of the provision in

sub­section (1) of Section 30 of the said Act and giving it a

textual meaning without considering the context in which the

said provisions have to be construed, in our view, would not

be permissible. We are at pains to say that the High Court

fell in error in doing so.

62. Another principle that the High Court has failed to

notice is that a part of a section cannot be read in isolation.

This Court, speaking through A.P. Sen, J., in the case of

Balasinor Nagrik Cooperative Bank Ltd. v. Babubhai

Shankerlal Pandya and Others11, observed thus:

“4. …..It is an elementary rule that construction of a section is to be made of all parts together. It is not permissible to omit any part of it. For, the principle

11 (1987) 1 SCC 606

52 that the statute must be read as a whole is equally applicable to different parts of the same section…..”

This principle was reiterated by this Court in the case of

Kalawatibai v. Soiryabai and Others12:

“6. ….. It is well settled that a section has to be read in its entirety as one composite unit without bifurcating it or ignoring any part of it…..”

63. Ignoring this principle, the High Court has picked up

clause (c) of sub­section (4) of Section 29 of the said Act in

isolation without even noticing the other provisions

contained in the said sub­section (4) of Section 29 of the said

Act. Similarly, again while considering the import of sub­

section (1) of Section 30 of the said Act, the High Court has

only picked up clause (b) of sub­section (1) of Section 30 of

the said Act, ignoring the provisions contained in clause (a)

of the said sub­section (1) of Section 30 of the said Act.

64. That leaves us with the reliance placed by the High

Court on the judgment of this Court in the case of Midas

12 (1991) 3 SCC 410

53 Hygiene Industries (P) Limited (supra). The High Court has

relied on the following observations of this Court in the

aforementioned case:

“5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.

[emphasis supplied by me]”

65. The emphasis has been placed by the High Court

on the observations of this Court in the case of Midas

Hygiene Industries (P) Limited (supra) to the effect that the

grant of injunction also becomes necessary if it prima facie

appears that the adoption of the mark was itself dishonest.

The High Court has relied upon the said observations to

reverse the order of injunction on the ground that there is no

dishonesty in the respondents­defendants’ adoption of the

mark and therefore, they cannot be said to have infringed the

trade mark. In our considered view, the aforesaid

observations are made out of context. In the said case, the

54 suit was filed for passing off or for infringement of the

copyright. In the said case, the Single Judge of the High

Court had granted injunction in favour of the plaintiff from

manufacturing, marketing, distributing or selling

insecticides, pesticides as well as insect repellent under the

name ‘LAXMAN REKHA’. The Division Bench had vacated

the injunction on the ground that there was delay and

laches. This Court found that at least from 1991, the

plaintiff was using the mark ‘LAXMAN REKHA’ and the

plaintiff was having a copyright in the marks ‘KRAZY LINES’

and ‘LAXMAN REKHA’ with effect from 19 th November 1991.

It was also found that the respondent worked with the

plaintiff prior to launching his business. In the said case,

this Court observed that the grant of injunction becomes

necessary if it prima facie appears that the adoption of the

mark was itself dishonest. However, the said judgment

cannot be used as a ratio for the proposition that, if the

plaintiff fails to prove that the defendant’s use was dishonest,

an injunction cannot be granted. On the contrary, the High

Court has failed to take into consideration the observations

55 made in the very same paragraph to the effect that in cases

of infringement, either of a trade mark or copyright, normally

an injunction must follow.

66. Insofar as the reliance placed by the learned counsel for the respondents­defendants on the judgment of this Court in

the case of Khoday Distilleries Limited (supra) is

concerned, the said case arose out of an application filed by

the applicants on 21st April 1986 with regard to rectification

of the trade mark. In the said case, the manufacture of the

product was started by the company in May 1968. The said

company filed an application for registration of its mark

before the competent authority. The manufacturer was

informed that its application was accepted and it was allowed

to proceed with the advertisement and the trade mark was

subsequently registered inasmuch as there was only one

opposition, and as such, the trade mark came to be

registered. The applicants had not filed any opposition

application. They came to know of the manufacturer’s mark

on or about 20th September 1974. They filed an application

for rectification of the said trade mark on 21 st April 1986.

56 The question of acquiescence was considered in the said case

since it was noticed that though the product was being

manufactured since 1968 and though the applicants who

sought rectification application came to know about the same

on or around 20th September 1974, the rectification

application came to be filed only in the year 1986. The

present case arises out of an action for infringement of a

trade mark. As such, ratio in Khoday Distilleries Limited

(supra), would not be applicable to the present case. It is

further to be noted that this Court in paragraph (84) of the

said judgment has specifically observed that the said Act had

no application in the said case, which reads thus:

“84. So far as the applicability of the 1999 Act is concerned, having regard to the provisions of Sections 20(2) and 26(2), we are of the opinion that the 1999 Act will have no application.”

67. In that view of the matter, reliance placed by the

respondents­defendants on the judgment of this Court in the

case of Khoday Distilleries Limited (supra) is misplaced. 57

68. Insofar as reliance placed on the judgment of this Court in the case of Nandhini Deluxe (supra) is concerned, in the

said case, the marks for consideration were “Nandhini” and

“Nandini”. It will be relevant to refer to the following

observations of this Court in the said case:

“30. Applying the aforesaid principles to the instant case, when we find that not only visual appearance of the two marks is different, they even relate to different products. Further, the manner in which they are traded by the appellant and the respondent respectively, highlighted above, it is difficult to imagine that an average man of ordinary intelligence would associate the goods of the appellant as that of the respondent.”

69. It could thus be seen that in the facts of the said case,

not only the visual appearance of the two marks were

different, but they even related to different products. As

such, the said judgment would also be of no assistance to the

case of the respondents­defendants in the present case.

70. Insofar as the reliance placed on the judgment of this

Court in the case of Neon Laboratories Limited (supra) is

concerned, the said case arose out of the proceedings for

grant of temporary injunction under Order XXXIX Rules 1

58 and 2 of the Code of Civil Procedure, 1908. The trial court

had granted an injunction in favour of the plaintiff finding

that the plaintiff had, with prima facie material, established

that it was using their trade mark well before the attempted

use of an identical or closely similar trade mark by the

appellant­defendant. The said injunction was affirmed by the

Single Judge of the High Court. Confirming the concurrent

orders, this Court held that the plaintiff would be entitled to

a temporary injunction in light of the “first in the market”

test. As such, the said judgment would also not be applicable

to the facts of the present case.

71. We are, therefore, of the considered view that the High

Court fell in error on various counts. The present case stood

squarely covered by the provisions of Section 29(2)(c) read

with sub­section (3) of Section 29 of the said Act. The

present case also stood covered under sub­sections (5) and

(9) of Section 29 of the said Act. The High Court has erred in

taking into consideration clause (c) of sub­section (4) of

Section 29 of the said Act in isolation without noticing other

parts of the said sub­section (4) of Section 29 of the said Act

59 and the import thereof. The High Court has failed to take into

consideration that in order to avail the benefit of Section 30

of the said 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, it is also necessary to establish that

such a use is in accordance with the honest practices in

industrial or commercial matters. As such, we have no

hesitation to hold that the High Court was not justified in

interfering with the well­reasoned order of the trial court.

72. Therefore, we are of the considered view that the High

Court fell in error by interfering with the well­reasoned order

of the trial court and so, the present appeal deserves to be

allowed.

73. In the result, the appeal is allowed and the impugned

judgment and order dated 12th April 2019 passed by the High

Court of Karnataka at Bengaluru in Regular First Appeal No.

1462 of 2012 is quashed and set aside. The judgement and

decree dated 21st June 2012 passed by the trial court in O.S.

No. 3 of 2009 is maintained.

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74. No order as to cost. Pending application(s), if any, are

disposed of in the above terms.

……....….......................J. [L. NAGESWARA RAO]

..…....….......................J. [B.R. GAVAI]

….…….........................J. [B.V. NAGARATHNA] NEW DELHI;

JANUARY 19, 2022.

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