An Identical Trademark

The Trade Marks Act, 1999 came into force on 15th September, 2003.  

When a trade mark is identical with a registered trade mark and goods or services are identical too, Court shall presume it is likely to cause confusion on public.

Court has pointed out, essentials of a passing off action cannot be equated with an action complaining of an infringement of a registered trade mark [Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, [1965] 1 SCR 737]. If essential features of a trade mark have been adopted, marked differences, in get-­up, packing and other writing or marks on goods or on packets in which goods are offered for sale, would be immaterial in a case of infringement of trade mark. In case of a passing off, one may escape liability if added matter is sufficient to distinguish goods.

In present case, Trial Court had rightly held, goods of Renaissance Hotel Holdings Inc. would be covered by Section 29(2)(c) read with Section 29(3) of said Act. Insofar as Sub­-Section (2) of Section 29 is concerned, it is sufficient if any condition provided in clauses (a), (b) or (c) is satisfied. It is further clear, in case of an eventuality covered under clause (c) of Sub-­Section (2) of Section 29 in view of provisions of Sub-­Section (3) of Section 29, Court shall presume it is likely to cause confusion on public.

It was not open for High Court to discuss whether trade mark of Renaissance Hotel Holdings Inc. had a reputation in India. As held in Ruston & Hornsby Limited v. Zamindara Engineering Co., (1969) 2 SCC 727, in an action for infringement, once found a trade mark is identical to a registered trade mark, Court will not enquire whether infringement is such as is likely to deceive or cause confusion.

As such, use of word ‘RENAISSANCE’ by B. Vijaya Sai as part of their trade name or business concern, would squarely be hit by Sub-­Section (5) of Section 29. It is further to be noted, words ‘RENAISSANCE’ and ‘SAI RENAISSANCE’ are phonetically as well as visually similar [Section 29(9)].

Unless it is established, use of impugned trade mark is in accordance with honest practices in industrial or commercial matters and is not to take unfair advantage or is not detrimental to distinctive character or repute of a trade mark, one could not get benefit under Section 30(1).

While interpreting provisions of a statute, it is necessary textual interpretation should be matched with contextual one. No word of a statute, no part of a section can be construed in isolation. We are at pains to say, High Court fell in error in doing so.

Hon’ble Justice B.R. Gavai, Renaissance Hotel Holdings Inc. v. B. Vijaya Sai, [Civil Appeal No. 404 of 2022].