B.R. GAVAI, J.
1.Leave granted.
2.This appeal challenges the judgment and order dated 12th April 2019 passed by the Single Judge of the High Court of Karnataka at Bengaluru in Regular First Appeal No. 1462 of 2012, thereby allowing the appeal filed by the respondents-defendants herein and setting aside the judgement and decree of the Principal District Judge, Bangalore Rural District, Bangalore (hereinafter referred to as the “trial court”), dated 21st June 2012 passed in O.S. No. 3 of 2009, in favour of the appellant-plaintiff herein.
3.The facts in brief giving rise to the filing of the present appeal are as under: The appellant-plaintiff filed a suit being O.S. No. 3 of 2009 before the trial court claiming a decree of permanent injunction to restrain the respondents-defendants from using the trade mark “SAI RENAISSANCE” or any other trade mark identical with the appellant-plaintiff’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
4.It is the case of the appellant-plaintiff that it is a company incorporated under the laws of the State of Delaware, United States of America. It is the further case of the appellant-plaintiff 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 appellant-plaintiff’s hotels such as bath robes, slippers, shirts, hats, matchboxes, writing paper, candies, etc. These products are imprinted with the appellant-plaintiff’s trade mark “RENAISSANCE”. It is the case of the appellant-plaintiff 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 appellant-plaintiff 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.
5.It is the further case of the appellant-plaintiff 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 appellant-plaintiff, it came across a website at www.sairenaissance.com through which it discovered that the respondents-defendants were operating one hotel in Bangalore and another one in Puttaparthi under the impugned name “SAI RENAISSANCE”, which wholly incorporates the appellant-plaintiff’s well-known trade mark and service mark “RENAISSANCE”. The appellant-plaintiff 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 that the respondents-defendants were running one hotel at Kadugodi, near Whitefield Railway Station, Bangalore and another one at By-Pass Road, Puttaparthi. It was further revealed that the respondents-defendants were copying appellant-plaintiff’s trade mark “RENAISSANCE”, its stylized representation, signage and business cards and leaflets. It is the case of the appellant-plaintiff that this was done in such a manner so as to suggest an affiliation, association, nexus or connection with the business of the appellant-plaintiff. The appellant-plaintiff, therefore, claimed infringement of its registered trade mark “RENAISSANCE” in Class 16 and Class 42. The appellant-plaintiff 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 respondents-defendants resisted the claim of the appellant-plaintiff 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 such exclusive rights can be claimed over it in India as it is neither a well-known mark, nor it has any reputation built up by the appellant-plaintiff. It is the case of the respondents-defendants 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 respondent-defendant that Sri Puttaparthi Sai Baba is the reincarnation of Sri Shirdi Sai Baba and therefore, the first respondent-defendant 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 respondent-defendant 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 respondent-defendant that the hotel was established so as to provide facilities to the devotees of Sri Sai Baba. The respondents-defendants further submitted that even the first respondent-defendant was not aware that the appellant-plaintiff had established any such hotel by incorporating the word “RENAISSANCE” in its name till he received suit summons in the said case.
8.It is contended by the respondents-defendants 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 appellant-plaintiff as claimed by it. It is submitted by the respondents-defendants that “RENAISSANCE” is neither a coined word nor an inventive mark. It is further the case of the respondents-defendants that the appellant-plaintiff’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 respondents-defendants that the class of customers to which they were catering was totally different from the class of customers to which the appellant-plaintiff was catering. It is their case that the services provided by them and the appellant-plaintiff were also totally different. It was contended that the respondents defendants did not provide non-vegetarian 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 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.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 respondents-defendants from using the trade mark “SAI RENAISSANCE” or any other trade mark which incorporates the appellant-plaintiff’s 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 appellant-plaintiff’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 respondents-defendants 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 appellant-plaintiff for damages. Being aggrieved thereby, the respondents-defendants appealed before the High Court.
13.The High Court observed that the evidence produced by the appellant-plaintiff did not disclose that a trans-border reputation was earned by it to uphold its plea in that regard. The High Court further observed that the appellant-plaintiff is a 5 Star hotel but the respondents-defendants’ hotel is not of that standard. The High Court further observed that no evidence was produced by the appellant-plaintiff to show that the respondents-defendants 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 appellant-plaintiff’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 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 appellant-plaintiff had admitted that the respondents-defendants 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 appellant-plaintiff’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 respondents-defendants herein by setting aside the judgement and decree dated 21st June 2012 passed by the trial court and dismissed the suit. Being aggrieved thereby, the appellant-plaintiff has approached this Court.
15.We have heard Shri K.V. Viswanathan, learned Senior Counsel appearing on behalf of the appellant-plaintiff and Shri B.C. Sitarama Rao, learned counsel appearing on behalf of the respondents-defendants.
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 appellant-plaintiff’s registered trade mark “RENAISSANCE” as a part of their trade name for the hotels and as a part of the name of their business concern, it squarely falls under sub-section (5) of Section 29 of the said Act and therefore, the respondents-defendants were liable for infringement of registered trade mark.
17.Shri Viswanathan further submitted that merely because the respondents-defendants 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 appellant-plaintiff was a prior user and registered proprietor in respect of the mark “RENAISSANCE” and having held that the respondents-defendants had adopted and had been using the registered trade mark of the appellant-plaintiff “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 appellant-plaintiff’s trade mark. The learned Senior Counsel in support of this proposition, relies on the judgment of this 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 respondents-defendants’ trade mark is identical with the appellant-plaintiff’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 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 respondents-defendants, submitted that the very suit filed by the appellant-plaintiff itself was not maintainable inasmuch as the appellant-plaintiff was not a legal person. It is further submitted that “RENAISSANCE” is a generic English word and the appellant-plaintiff 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 “re-birth” and that the name “SAI RENAISSANCE” was 4 [1965] 1 SCR 737 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 appellant-plaintiff acquiesced to the respondents-defendants’ 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 respondents-defendants’ 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 appellant-plaintiff and the respondents-defendants 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 respondents-defendants relies on the judgments of this Court in the cases of Khoday Distilleries Limited (Now known as Khoday India Limited) v. Scotch Whisky Association 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 8 [1960] 1 SCR 968 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.”
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.”
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; ……”
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 15th 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 sub-section (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 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 (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 (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. (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.” 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. Sub-section (2) of Section 28 of the said Act provides that the exclusive right to the use of a trade mark given under sub-section (1) of Section 28 of the said Act shall be subject to any conditions and limitations to which the registration is subject. The provisions of sub-section (3) of Section 28 of the said Act would not be relevant for the purpose of the present case. 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. Sub-section (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 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. Sub-section (3) of Section 29 of the said Act is of vital importance. It 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.
32.A perusal of sub-section (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 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. Sub-section (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.
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
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.
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.
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.
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.
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.
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 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
(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
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
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) Sub-section (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.”
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
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):
“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 get-up 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
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 get-up, 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
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 get-up, 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
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 get-up 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
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
passing-off. But it differs from that law in
two particulars, namely (1) it is
concerned only with one method of
passing-off, 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.””
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.
48. In the present case, both the trial court and the High
Court have come to the conclusion that the trade mark 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, 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 appellant-plaintiff 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
appellant-plaintiff had failed to establish that the trade mark
has reputation in India and that the respondents-defendants’
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
sub-section (4) of Section 29 of the said Act to arrive at such
a conclusion.
50. We find that the High Court has totally erred in taking
into consideration only clause (c) of sub-section (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
sub-section (2) of Section 29 of the said Act, it has used the
word ‘and’ after clauses (a) and (b) in sub-section (4) of
Section 29 of the said Act. It could thus be seen that the
legislative intent is very clear. Insofar as sub-section (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 sub-section (2) of Section 29 in view of the
provisions of sub-section (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 sub-section (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
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 sub-section (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
sub-section (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, sub-section (4) of Section 29 of the said Act 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.
53. Undisputedly, the appellant-plaintiff’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
appellant-plaintiff’s trade mark, was being used by the
respondents-defendants in relation to the goods and services
similar to that of the appellant-plaintiff’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 appellant-plaintiff’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
respondents-defendants and the appellant-plaintiff cater to
different classes of customers and as to whether there was
likely to be confusion in the minds of consumers with regard
to the hotel of the respondents-defendants belonging to the
same group as of the appellant-plaintiff’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 appellant-plaintiff’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 respondents-defendants, was also in relation to Class
16 and Class 42. As such, the use of the word
“RENAISSANCE” by the respondents-defendants as a part of
their trade name or business concern, would squarely be hit
by sub-section (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, sub-section (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
sub-section (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
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
(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
in sub-section (1) of Section 30 of the said Act, after clause
(a), the word used is ‘and’, like the one used in sub-section
(4) of Section 29 of the said Act, in contradistinction to the
word ‘or’ used in sub-section (2) of Section 29 of the said Act.
The High Court has referred only to the condition stipulated
in clause (b) of sub-section (1) of Section 30 of the said Act
ignoring the fact that, to get the benefit of sub-section (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
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 statute-maker, 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.”
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
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 sub-section
(4) of Section 29 of the said Act and a part of the provision in
sub-section (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
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 sub-section (4) of Section 29 of the said Act in
isolation without even noticing the other provisions
contained in the said sub-section (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 sub-section (1) of Section 30 of
the said Act, ignoring the provisions contained in clause (a)
of the said sub-section (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
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]”
The emphasis has been placed by the High Court65.
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 respondents-defendants’ 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
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 19th 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
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 respondents-defendants 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 21st April 1986.
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
respondents-defendants on the judgment of this Court in the
case of Khoday Distilleries Limited (supra) is misplaced.
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 respondents-defendants 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
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
appellant-defendant. 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 sub-section (3) of Section 29 of the said Act. The
present case also stood covered under sub-sections (5) and
(9) of Section 29 of the said Act. The High Court has erred in
taking into consideration clause (c) of sub-section (4) of
Section 29 of the said Act in isolation without noticing other
parts of the said sub-section (4) of Section 29 of the said Act
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 well-reasoned order of the trial court.
72. Therefore, we are of the considered view that the High
Court fell in error by interfering with the well-reasoned 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.
74. No order as to cost. Pending application(s), if any, are
disposed of in the above terms.
[B.R. GAVAI]