Time and again, the provisions laid in the statute and their interpretations by the Courts have come into light in various decisions, which has made it clearer that textual and contextual interpretation goes hand in hand. One cannot be ignored for the other nor the absence of one can make up for the other. Both are indispensable for the effective reading of the legislative intent behind the framing of the statutes and whenever, such guiding principles stands amiss, the adjudication by the Courts have always given way to such harmonious interpretation and once such matter which is to be mentioned here is a recent case of Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors. (Civil Appeal 404 of 2022).
Facts of the case: The Appellant/Plaintiff filed a suit (O.S. No. 3 of 2009) before the Trial Court claiming a decree of permanent injunction to restrain the Respondents/Defendants from using the Trademark SAI RENAISSANCE or any other trade mark identical with the Appellant/Plaintiffs trademark RENAISSANCE, along with the damages.
The Appellant/Plaintiff contended that they are the Registered Proprietor of the trademark RENAISSANCE inrelation to goods/services falling in classes 16 & 42 and have been using the said mark since the year 1981, globally and in India, since the year 1990. They are also the owner of the domain name www.renaissancehotels.com and is running one of the world’s largest and leading chains of hotels under the trademark RENAISSANCE. The Appellant/Plaintiff averred that they came across a website being run as www.sairenaissance.com and upon further investigation, the Appellant/Plaintiff came to know about 2 hotels being run in Bangalore and Puttaparthi respectively, where the Respondents/Defendants were using the impugned mark SAI RENAISSANCE, which was similar/identical in stylized representation, signage and the same representation was being used in business cards and leaflets and in relation to a wide variety of goods commonly found in the Appellant/ Plaintiffs hotels. The Appellant/Plaintiff therefore, claimed infringement of its Registered Trademark RENAISSANCE in classes 16 and 42.
Per contra, the Respondents/Defendants resisted the claim of the Appellant/Plaintiff taking the grounds of delay, laches and acquiescence. They averred that RENAISSANCE is a generic word and is commonly found in the dictionary and is use by a large number of people and therefore, the trademark RENAISSANCE has not become distinctive with the Appellant/Plaintiff as claimed by it. The Respondent/ Defendant contended that the class of customers to which they cater are also entirely different as their hotel was established to provide facilities to the devotees of Sri Sai Baba and they did not provide non-vegetarian food and alcohol drinks to its customers. Thus, there was no possibility of any kind of confusion being created in the minds of customers that the hotel of the Respondents/Defendants belonged to or was affiliated to the Appellant/Plaintiff.
Trial Court Decision: The court after considering the evidence on record and contentions raised on the part of the Parties had come to the conclusion that the trademark of the Respondents/Defendants is identical with that of the Appellant/Plaintiff and further that the services rendered by the Respondents/Defendants are under the same class 16 and 42, in respect of which the Appellant/Plaintiffs trademark ‘RENAISSANCE’ was registered. In such circumstances, the Trial Court held that the goods of the Appellant/Plaintiff would be covered bySection 29 (2) (c) read with Section 29 (3) of the Trademark Act, 1999.[1] The Respondent/Defendant aggrieved from the decision appealed before the High Court.
Decision Overturned: The Hon’ble High Court of Karnataka reversed the decree of injunction granted by the Trial Court by taking into consideration the provision of Section 29 (4)(c ) of the Trademark Act, 1999[2], and held that the Appellant/Plaintiff had failed to establish that the trademark has reputation in India and the Respondents/Defendants use was honest and there was no probability of any kind of confusion likely to be created in the minds of the consumers inasmuch as the class of consumers were totally different. The Appellant/Plaintiff being aggrieved from the said decision filed Appeal before the Hon’ble Supreme Court and challenged the judgment and order, thereto.
Appeal to the Supreme Court: The Hon’ble Supreme Court allowed the appeal and set aside the order of the Hon’ble High Court of Karnataka at Bengaluru on the premise that the High Court has erred in taking into consideration the provisions of Section 29(4)(c) of the Trademark Act, 1999 in isolation without noticing other parts of the said sub-section (4) of Section 29 of the said Act and the import thereof. Even 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 trademark was not such as to take unfair advantage of or is detrimental to the distinctive character or repute of the trademark, it is also necessary to establish that such a use is in accordance with the honest practices in industrial or commercial matters. The Hon’ble Court took the observation made by A.P. Sen, J, in the matter of Balasinor Nagrik Cooperative Bank Ltd. v. Babubhai Shankerlal Pandya and Others, AIR 1987 SC 849 into consideration, wherein it was held,
“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 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 Others, AIR 1991 SC 1581,
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..”
Therefore, the trite law of harmonious interpretation of the statute has been brought into action while deciding the present matter and emphasis has been given that the Act must be looked at as a whole. It is necessary that no part of a statute and no word of a statute can be construed in isolation. 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 registered trademark by its proprietor along with the limitation to such rights. Thus, the cohesive reading of the provisions of the Act gives effect to the legislative intent and purpose of our Trademark Law.
[1] 29. Infringement of registered trade marks.—
(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.
[2] (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
(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.
AUTHOR: NEHA SHARMA, IP ATTORNEY, NLU JODHPUR
DUCTUS EDGE 