Supreme Court upholds permanent injunction granted to Renaissance Hotel restraining others from using an identical trade mark

The top court has allowed an appeal filed by Renaissance Hotel Holdings Inc while upholding a decree passed by the trial court whereby it partly allowed a plea by the hotel chain and granted a permanent injunction restraining the respondents from using the trademark “SAI RENAISSANCE” or any other trade mark identical with the trade mark “RENAISSANCE”.

Further, the trial court restrained the respondents from using any trade mark which incorporates the trade mark “RENAISSANCE” or is deceptively similar thereto in relation to or upon printed matter, periodicals, books, instructional and teaching materials, stationery, manuals, magazines and office requisites amounting to infringement of the registered trade mark 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 registered trade mark in Class 42.

After this decree was challenged before the Karnataka High Court, the same was set aside. The hotel chain challenged this judgment in the instant appeal.

A bench of Justices L Nageshwar Rao, BR Gavai and BV Nagarathna held that the High Court fell in error by interfering with the well-­reasoned order of the trial court and went on to allow the appeal.

It was found that, both the trial court and the High Court concluded that the trade mark of the respondent was identical with that of the appellant and further that the services rendered by the respondent was under the same class, i.e., Class 16 and Class 42, in respect of which the appellant’s trade mark “RENAISSANCE” was registered.

In such circumstances, it was noted that the trial court had rightly held that the goods of the appellant would be covered by Section 29(2)(c) read with Section 29(3) of the Trade Marks Act, 1999.

Since, appellant’s trade mark “RENAISSANCE” was registered and the mark “SAI RENAISSANCE”, was being used by the respondents in relation to the goods and services similar to that of the appellant, the top court held that it was not open for the High Court to enter into a discussion as to whether the appellant’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.

“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...”, added the bench.

Cause Title: RENAISSANCE HOTEL HOLDINGS INC. v B. VIJAYA SAI AND OTHERS