We’re pleased to bring you a guest post by Sangita Sharma, looking at the Supreme Court’s order in the trademark infringement case Renaissance Hotel Holdings Inc. v. Vijaya Sai and Others. Sangita is a 3rd Year student at Gujarat National Law University and has written for us earlier here.
Clarifying or Confusing the Quandary of Identical Marks: Renaissance Hotel Holdings Inc. v. Vijaya Sai and Others
Are Sangita and Zai Sangita identical or similar? How does one differentiate between identical and similar? Recently, the Supreme Court in Renaissance Hotel Holdings Inc v. B. Vijaya Sai and Others seems to have missed an opportunity to provide clarity on this question in a trademark infringement case hinged around Section 29(2) and (3).
The appellant is the proprietor of the registered trademark “RENAISSANCE” for hotels, restaurants, bars, etc, and for the goods commonly found in its hotels. According to them, they have been using this trademark in India since 1990. The respondent claims that they adopted the name “SAI RENAISSANCE” for their hotels which they have been running for the last 15 years and established their first hotel in 2001.
The appellant first filed the suit in the year 2009 to restrain the respondent from using the trademark “SAI RENAISSANCE” or any other trade mark identical with the appellant’s trade mark. The respondent contested this, saying that RENAISSANCE is a generic word, not a well-known mark, and the class of consumers for both the marks is different.
Initially, the trial court restrained the respondents from using “RENAISSANCE” or any deceptively similar mark thereto. However, it rejected the claim of the appellant for damages. The appellant appealed before the High Court and it decided in favour of the respondent stating that as neither unfair advantage was taken nor the reputation of the appellant’s trademark was harmed, therefore there is no infringement. The appellant aggrieved by the High Court’s order approached the Supreme Court, where the High Court’s order was quashed and the trial court’s decision was reinstated.
The Supreme Court in determining whether there has been an infringement or not, considered section 29(2)(c) read with section 29(3) to be the most relevant. Before moving to the analysis, kindly have a quick look at Section 29(2).
A perusal of this section reveals that a registered trademark will be infringed if any of the eventualities mentioned in clauses (a), (b), and (c) are 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 situation, covered by clause (a), is when both the marks are identical and the goods or services covered are similar. Clause (b) covers the situation when both marks are similar and the goods or services covered are identical or similar. The third situation covered in clause (c) relates to when the marks, as well as the goods or services covered, are identical. Eashan Ghosh has written about the permutations and combinations emerging from this sub-section earlier on the blog, here.
Section 29(2) provides for a two-tier test within these three circumstances that can lead to the infringement of a registered trademark as stated in Jsb Cement Llp vs Assam Roofing Limited And Others (para 43).
- i) The characteristics of the registered mark and the nature of the goods or services covered should be similar or identical with the alleged infringed mark and goods or services.
- ii) This type of identity or similarity is likely to cause confusion on the part of the public or disjunctively, likely to have an association with the registered mark.
Notably, the first tier can be discounted if the situation is governed by Section 29(2)(c) (i.e. marks and goods or services are identical) as it brings the statutory presumption of likelihood of confusion on the part of the public under Section 29(3) into play.
In view of the different effects resulting after qualifying these cases, it is imperative to identify the relevant sub-clause of Section 29(2) applicable to a particular trademark infringement case. This identification of a particular sub-clause becomes essential in light of Section 29(3) as it is only applicable to one of these three cases. Therefore, to identify the relevant sub-clause and to effectuate Section 29(3), it is important to define and distinguish between ‘identical’ and ‘similar’ marks or goods/services. Unfortunately, there does not seem to be judicial guidelines which provide these definitions or distinctions.
In the present case the Trial Court and the High Court both concluded that the marks are identical, thus the Supreme Court couldn’t examine this fact. Also, this question was not raised by the respondent, therefore it couldn’t delve into this factual matrix. Nevertheless, it seems a missed opportunity for some jurisprudential guidance for classifying disputed marks as identical or similar.
Clarifying or Confusing?
Although the court seems to proceed with the understanding that the case falls under Section 29(2)(c), at one point the wordings of the court are confusing.
- Undisputedly, the appellant-plaintiff’s trade mark “RENAISSANCE” is registered to goods and services in Class16 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 similarto that of the appellant-plaintiff’s.
The Court after summing up and comparing Section 29(2) and Section 29(4), apply the summarized Section 29(2) to the present facts. The court’s wording of including similar to the registered trademark and changing identity to the similarity of goods and services seems to imply that both words can be used interchangeably. However, if that is assumed then providing three different eventualities under Section 29(2) is redundant and the statutory presumption specifically for Section 29(2)(c) under Section 29(3) is infructuous.
Identical or Not
The Trade Marks Act, 1999 defines neither identical nor similar, but it does define “deceptively similar” (section 2(1)(h)). Taking recourse from the dictionary suggests that identical is being the same and similar is having characteristics in common, thus both are not the same.
Relevantly, Article 5(1)(a) of the Trade Marks Directive of EU is very similar to Section 29(2)(c) of the Trade Marks Act, 1999. The ECJ in Société LTJ Diffusion v Sadas Vertbaudet SA (para 54) ascertains that ‘a sign which is identical with the trade mark’ within Article 5(1)(a) is when “it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer.”
Indian courts, unlike the EU, have not provided any clear and explicit definition for marks that are identical. However, a few cases indicate that Indian courts too understand this the same way. These includes: P.M. Diesels Private Limited vs Thukral Mechanical Works, (the court held that both the proprietor’s marks of “Field Marshal” were identical); Yahoo! Inc. vs Sanjay V. Shah AndOrs., (the court concluded that the adoption of the mark “YAHOO”, by the defendant is the adoption of the identical mark of the plaintiff); and Shambhu Nath & Brothers &Ors vs Imran Khan, (where “TOOFAN” and “SNJ TOOFAN” were held to be deceptively similar but not identical because Section 29(1)’s wordings indicate they are to be treated as separate situations).
Therefore, based on the above definitions and judicial trends, it won’t be amiss to conclude that identical marks should be the identically the same. However, real life is not always black and white, and the degree of similarity which equates to ‘the same’ can become a subjective question which lies at the court’s discretion. The Court could have cleared the air around it and provided succinct definitions or guidelines.
Test for Infringement when Marks are Identical
The Court relied on Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories and Ruston & Hornsby Limited v. Zamindara Engineering Co. to conclude that in an action of infringement where the marks are identical, the Court will not inquire whether the infringement is such as is likely to deceive or cause confusion. The only proof that is required is that the defendant has used the registered trade mark of the plaintiff. The Court need not analyze further evidence and external features even if they distinguish the products are immaterial. The user can escape liability relying on the added matter that distinguishes his goods from those of plaintiffs in case of a passing off not in a case of infringement.
Correcting The High Court’s Misinterpretation
The High Court had held that the appellant failed to establish a reputation in India and no unfair advantage of the respondent’s mark was taken as required under Section 29(4)(c) and Section 30(1)(b) respectively. Therefore, there was no confusion likely to be created in the minds of the consumer. The legislature in both of these provisions used the conjunctive “and” which indicates that all the conditions or sub clause mentioned had to be satisfied. The High Court had only picked up a part of provisions to arrive at its decision, when actually other conditions also had to be met to avail the benefit of these provisions. The Supreme Court rightly overturned this glaring mistake of the High Court as an interpretation must depend on text and the context and a part of a section cannot be read in isolation.
Section 29(2) is a significant provision to look at in trademark infringement cases. The distinction between the two major keywords (identical and similar) used in this provision becomes crucial to decide any case for trademark infringement. Further, clarification regarding identical marks and goods/services holds value in light of statutory presumption under Section 29(3). While the court came to what seems to be the correct outcome, it missed a great opportunity to clarify this quandary
The author would like to thank Swaraj Barooah and Lokesh Vyas for their valuable comments.