Renaissance Hotel Holdings Inc. v. B. Vijaya Sai and Others
A concise case summary and analysis of the Supreme Court of India decision dated January 19, 2022.
Introduction
In the realm of intellectual property, where brands battle for supremacy, Renaissance Hotel Holdings Inc. v. B. Vijaya Sai and Others emerges as a landmark showdown before the Supreme Court of India. Decided on January 19, 2022, this case pits a global hospitality giant against a local hotel operator over the use of the trademark “Renaissance.” The dispute encapsulates the tension between statutory trademark rights and claims of honest use, weaving a narrative of legal precision, commercial identity, and judicial interpretation. The Supreme Court’s ruling not only resolves a contentious infringement claim but also illuminates the contours of the Trade Marks Act, 1999, offering a masterclass in statutory application and trademark protection in India’s evolving commercial landscape.
Detailed Factual Background
Renaissance Hotel Holdings Inc., a Delaware-based corporation, stands as a titan in the global hospitality industry, operating under the trademark “Renaissance” since 1981. This mark, registered in India under Class 16 (Registration No. 610567) for printed materials and Class 42 (Registration No. 1241271) for hotel and related services, has adorned its hotels, spas, and merchandise worldwide, including establishments in Mumbai and Goa since 1990. With an annual advertising budget of US$14 million and a domain name (www.renaissancehotels.com), the appellant asserts a formidable trans-border reputation, claiming “Renaissance” as a distinctive symbol of its luxury hospitality empire.
The respondents, led by B. Vijaya Sai, operate two modest hotels in Bangalore (Kadugodi) and Puttaparthi under the name “Sai Renaissance.” Devotees of Sri Shirdi Sai Baba and Sri Puttaparthi Sai Baba, they adopted this name in 2001, believing the latter to be a reincarnation of the former—thus, “renaissance” symbolizing rebirth. Their hotels cater primarily to Sai Baba devotees, offering vegetarian fare sans alcohol, a stark contrast to the appellant’s five-star offerings. The respondents’ use of “Sai Renaissance” came to the appellant’s attention in 2008 via the website www.sairenaissance.com, prompting an investigation that revealed alleged copying of signage, business cards, and the “Renaissance” mark, suggesting an unauthorized affiliation.
Detailed Procedural Background
The appellant initiated legal action in 2009, filing O.S. No. 3 of 2009 before the Principal District Judge, Bangalore Rural District, seeking a permanent injunction, delivery of infringing materials, and damages of Rs. 3,50,000. On June 21, 2012, the trial court partly decreed the suit, granting an injunction against the respondents’ use of “Sai Renaissance” or any mark incorporating “Renaissance” in Classes 16 and 42, but denying damages and delivery-up claims.
The respondents appealed to the High Court of Karnataka in Regular First Appeal No. 1462 of 2012. On April 12, 2019, a Single Judge reversed the trial court’s decree, dismissing the suit on grounds of no trans-border reputation, honest use by the respondents, and no likelihood of confusion due to differing customer bases. Aggrieved, the appellant escalated the matter to the Supreme Court via Civil Appeal No. 404 of 2022, arising from SLP(C) No. 21428 of 2019, culminating in the January 19, 2022, judgment by a three-judge bench.
Issues Involved in the Case
- Whether the respondents’ use of “Sai Renaissance” infringes the appellant’s registered trademark “Renaissance” under Sections 29(2)(c), 29(3), 29(5), or 29(9) of the Trade Marks Act, 1999.
- Whether the High Court erred in applying Section 29(4) (for dissimilar goods/services) instead of provisions for identical marks and services.
- Whether the respondents’ use qualifies as honest concurrent use under Section 30, shielding them from infringement.
- Whether the appellant’s delay in filing the suit constitutes acquiescence, barring relief.
- Whether “Renaissance”’s generic nature or the respondents’ addition of “Sai” negates infringement.
Detailed Submission of Parties
Appellant
The appellant, represented by Senior Counsel K.V. Viswanathan, argued that the respondents’ use of “Sai Renaissance” infringed its registered mark under multiple provisions of Section 29. Under Section 29(2)(c), the identical mark and services (hotels) triggered a statutory presumption of confusion per Section 29(3). Section 29(5) was invoked as the respondents used “Renaissance” in their trade name, a direct infringement. Section 29(9) applied due to phonetic and visual similarity. Viswanathan contended that the High Court misapplied Section 29(4), which requires reputation and detriment only for dissimilar goods, irrelevant here given the identical services. Citing precedents, he argued that in infringement cases, confusion need not be proven when marks are identical, and the prefix “Sai” did not mitigate the violation.
Respondents
The respondents, represented by B.C. Sitarama Rao, countered that the suit was untenable due to delay and the appellant’s lack of legal personhood. They portrayed “Renaissance” as a generic dictionary term, incapable of exclusive appropriation, and justified “Sai Renaissance” as an honest tribute to Sai Baba’s reincarnation, used since 2001 without appellant awareness until 2009. They highlighted distinct customer bases—devotees versus luxury travelers—and differing services (vegetarian versus full-service), negating confusion. Claiming honest concurrent use under Section 12 and protection under Section 30, they relied on precedents to argue that their use neither exploited nor harmed the appellant’s mark.
Detailed Discussion on Judgments Cited by Parties and Their Context
The appellant cited Laxmikant v. Patel v. Chetanbhai Shah [(2002) 3 SCC 65], where the Supreme Court upheld an injunction against a similar mark in the same trade, emphasizing protection of goodwill. In Ruston & Hornsby Limited v. Zamindara Engineering Co. [(1969) 2 SCC 727], the Court ruled that in infringement cases, identical mark use warrants an injunction without proving confusion, distinguishing it from passing off. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories [[1965] 1 SCR 737] reinforced that close similarity in marks negates the need for further evidence in infringement actions. Midas Hygiene Industries (P) Limited v. Sudhir Bhatia [(2004) 3 SCC 90] underscored that injunctions typically follow infringement, irrespective of delay unless adoption is dishonest.
The respondents relied on Khoday Distilleries Limited v. Scotch Whisky Association [(2008) 10 SCC 723], which addressed acquiescence in rectification proceedings, not infringement, rendering it inapposite. Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited [(2018) 9 SCC 183] distinguished dissimilar marks and goods (milk versus restaurants), unlike the identical services here. Corn Products Refining Co. v. Shangrila Food Products Limited [[1960] 1 SCR 968] and Neon Laboratories Limited v. Medical Technologies Limited [(2016) 2 SCC 672] dealt with distinct contexts (opposition and interim injunctions), offering limited relevance.
Detailed Reasoning and Analysis of Judge
Justice B.R. Gavai, authoring the Supreme Court’s opinion, meticulously dissected the High Court’s errors. The Court traced the evolution of trademark law from the 1940 Act to the 1999 Act, emphasizing the latter’s intent to harmonize global trade practices and prohibit unauthorized use of registered marks in trade names. Under Section 29(2)(c), the identical mark “Renaissance” and identical services (hotels) triggered a presumption of confusion under Section 29(3), rendering further proof unnecessary. Section 29(5) applied as “Renaissance” formed part of the respondents’ trade name, and Section 29(9) covered phonetic and visual similarity, amplifying the infringement.
The High Court’s reliance on Section 29(4) was deemed a misstep, as it pertains to dissimilar goods/services and requires reputation and detriment—irrelevant here given the identical services. The Court criticized the High Court’s focus on customer classes and confusion, citing Ruston & Hornsby to affirm that infringement hinges on mark use, not deception likelihood. The respondents’ Section 30 defense failed, as honest use required both fair practice and no detriment, conditions unmet given the unauthorized adoption. Textual and contextual interpretation, per Reserve Bank of India v. Peerless [(1987) 1 SCC 424], and holistic statutory reading, per Balasinor Nagrik Cooperative Bank [(1987) 1 SCC 606], underscored the High Court’s fragmented approach, ignoring legislative intent.
Final Decision
The Supreme Court allowed the appeal, quashing the High Court’s judgment of April 12, 2019, and reinstating the trial court’s decree of June 21, 2012. The respondents were restrained from using “Sai Renaissance” or any mark incorporating “Renaissance” in Classes 16 and 42, affirming the appellant’s exclusive rights.
Law Settled in This Case
The judgment clarifies that under Section 29(2)(c) and (3), identical marks and goods/services presume confusion, mandating injunctions without further evidence. Section 29(5) prohibits use of a registered mark in trade names, and Section 29(9) extends protection to phonetic/visual similarity. Section 29(4) applies only to dissimilar goods, requiring reputation and detriment, not relevant to identical services. Section 30’s honest use defense demands both fair practice and no detriment, a conjunctive test. The ruling reinforces statutory primacy in infringement actions, distinguishing them from passing off’s common law roots.
