| Headnote |
Trade Marks Act, 1999 – s.29(2)(c) r/w s.29(3); ss.29(4), (5), 29(9), 30 – Infringement of trade mark – Mark identical to the registered trade mark and also used in relation to identical goods/ services – Presumption u/s.29(3) – Appellant filed suit for permanent injunction to restrain the respondents from using the trade mark “SAI RENAISSANCE” or any other trade mark identical with their trade mark “RENAISSANCE” used by it for its hospitality business throughout the world since 1981 and in India since 1990 – Respondents restrained inter alia from using the trade mark “SAI RENAISSANCE” or any other trade mark which incorporates the appellant’s trade mark “RENAISSANCE” or is deceptively similar thereto, appellant’s claim for damages rejected – Order set aside by High Court – On appeal, held: Appellant’s trade mark “RENAISSANCE” is registered u/Class 16 and Class 42 dealing with hotels, hotel related services and goods – “SAI RENAISSANCE” used by the respondents- was also in relation to Class 16 and Class 42 – When the defendant’s trade mark is identical with the registered trade mark of the plaintiff and the goods/services of the defendant are identical with the goods/services covered by registered trade mark, the Court shall presume that it is likely to cause confusion on the part of the public – Trial court rightly held that the goods of the appellant would be covered by s.29(2)(c) r/w s.29(3) – Use of the word “RENAISSANCE” by respondents would squarely be hit by sub-section(5) of s.29 – Further, use of the word “SAI RENAISSANCE” which is phonetically and visually similar to “RENAISSANCE”, would also be an act of infringement in view of s.29(9) – High Court also erred in picking up only clause (c) of s.29(4) without noticing other parts of the said sub-section – Similarly, while considering the import of sub--section (1) of s.30, it only picked up clause (b) of s.30(1) ignoring the provisions contained in clause (a) of s.30(1) – Order of High Court set aside, decree of the trial court is maintained – Intellectual Property. Trade Marks Act, 1999 – s.29(2)(c), 29(3) – Presumption u/ s.29(3) – Held: In case of an eventuality covered u/clause (c) of sub-section (2) of s.29 in view of the provisions of sub-section (3) of s.29, the Court shall presume that it is likely to cause confusion on the part of the public. Trade Marks Act, 1999 – Passing off and infringement of registered trade mark – Distinction between – Discussed – Intellectual Property. Trade Marks Act, 1999 – s.29(2), 29(4) – Distinction – Held: While sub-section (2) of s.29 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 s.29 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. Trade Marks Act, 1999 – s.29(9) – Respondent was using the mark “SAI RENAISSANCE”, appellant claimed infringement of its registered trade mark “RENAISSANCE” – Held: Sub-section (9) of s.29 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 s.29. Trade Marks Act, 1999 – s.30 – Benefit under, on fulfillment of twin conditions – Held: To avail benefit of s.30, it is required that the twin conditions are fulfilled, 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. Interpretation of Statutes – Principles of – Textual, contextual interpretation – Held: While interpreting the provisions of a statute, it is necessary that the textual interpretation should be matched with the contextual one – Further, no part of a statute and no word of a statute can be construed in isolation – Trade Marks Act, 1999. Words & Phrases – Trade Marks Act, 1999 – ss. 29(2)(a), (b), 29(4)(a), (b) – Use of word ‘or’ vis-à-vis use of ‘and’ – Held: While the legislature has used the word ‘or’ after clauses (a) and (b) in sub-section (2) of s.29, it has used the word ‘and’ after clauses (a) and (b) in sub-section (4) of s.29 – The legislative intent is very clear – Insofar as sub-section (2) of s.29 is concerned, it is sufficient that any of the conditions as provided in clauses (a), (b) or (c) is satisfied – Whereas, by employing the word “and” after clauses (a) and (b) in sub-section (4) of s.29, it is clear that 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. |
