RENAISSANCE HOTEL HOLDINGS INC. versus B. VIJAYA SAI AND OTHERS

RENAISSANCE HOTEL HOLDINGS INC.

B. VIJAYA SAI AND OTHERS

(Civil Appeal No. 404 of 2022)

JANUARY 19, 2022

[L. NAGESWARA RAO, B. R. GAVAI ANDB. V. NAGARATHNA, JJ.]

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 theregistered trade mark and also used in relation to identical goods/services – Presumption u/s.29(3) – Appellant filed suit for permanentinjunction to restrain the respondents from using the trade mark“SAI RENAISSANCE” or any other trade mark identical with theirtrade mark “RENAISSANCE” used by it for its hospitality businessthroughout the world since 1981 and in India since 1990 –Respondents restrained inter alia from using the trade mark “SAIRENAISSANCE” or any other trade mark which incorporates theappellant’s trade mark “RENAISSANCE” or is deceptively similarthereto, appellant’s claim for damages rejected – Order set aside byHigh Court – On appeal, held: Appellant’s trade mark“RENAISSANCE” is registered u/Class 16 and Class 42 dealingwith hotels, hotel related services and goods – “SAI RENAISSANCE”used by the respondents- was also in relation to Class 16 and Class42 – When the defendant’s trade mark is identical with the registeredtrade mark of the plaintiff and the goods/services of the defendantare identical with the goods/services covered by registered trademark, the Court shall presume that it is likely to cause confusion onthe part of the public – Trial court rightly held that the goods of theappellant would be covered by s.29(2)(c) r/w s.29(3) – Use of theword “RENAISSANCE” by respondents would squarely be hit bysub-section(5) of s.29 – Further, use of the word “SAIRENAISSANCE” which is phonetically and visually similar to“RENAISSANCE”, would also be an act of infringement in view ofs.29(9) – High Court also erred in picking up only clause (c) ofs.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

Acontained 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) ofsub-section (2) of s.29 in view of the provisions of sub-section (3)Bof s.29, the Court shall presume that it is likely to cause confusionon the part of the public.

Trade Marks Act, 1999 – Passing off and infringement ofregistered 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 thetrade mark is identical or similar and the goods covered by such atrade mark are identical or similar – Sub-section (4) of s.29 dealswith situations where though the trade mark is identical, but theDgoods or services are not similar to those for which the trade markis registered.

Trade Marks Act, 1999 – s.29(9) – Respondent was using themark “SAI RENAISSANCE”, appellant claimed infringement of itsregistered trade mark “RENAISSANCE” – Held: Sub-section (9) ofEs.29 provides that where the distinctive elements of registered trademark consist of or include words, the trade mark may be infringedby the spoken use of those words as well as by their visualrepresentation – 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 ofFsub-section (9) of s.29.Trade Marks Act, 1999 – s.30 – Benefit under, on fulfillmentof twin conditions – Held: To avail benefit of s.30, it is required thatthe twin conditions are fulfilled, i.e., the use of the impugned trademark being in accordance with the honest practices in industrial orGcommercial matters, and that such use is not such as to take unfairadvantage of or be detrimental to the distinctive character or reputeof the trade mark.

Interpretation of Statutes – Principles of – Textual, contextualinterpretation – Held: While interpreting the provisions of statute,Hit is necessary that the textual interpretation should be matched

with the contextual one – Further, no part of statute and no wordof 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: Whilethe legislature has used the word ‘or’ after clauses (a) and (b) insub-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 veryclear – Insofar as sub-section (2) of s.29 is concerned, it is sufficientthat any of the conditions as provided in clauses (a), (b) or (c) issatisfied – 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 threeconditions are satisfied, it will not be open to the proprietor of theregistered trade mark to sue for infringement when though theimpugned trade mark is identical with the registered trade mark,but is used in relation to goods or services which are not similar tothose for which the trade mark is registered.

Allowing the appeal, the Court

HELD: 1.1 In all legal proceedings relating to trade markregistered under the Trade Marks Act, 1999 (the said Act), theoriginal registration of the trade mark and of all subsequentassignments and transmissions of the trade mark shall be primafacie evidence of the validity thereof. The legislative scheme isclear that when the mark of the defendant is identical with theregistered trade mark of the plaintiff and the goods or servicescovered are similar to the ones covered by such registered trademark, it may be necessary to prove that it is likely to causeconfusion on the part of the public, or which is likely to have anassociation with the registered trade mark. Similarly, when thetrade mark of the plaintiff is similar to the registered trade markof the defendant and the goods or services covered by suchregistered trade mark are identical or similar to the goods orservices covered by such registered trade mark, it may again benecessary to establish that it is likely to cause confusion on thepart of the public. However, when the trade mark of the defendantis identical with the registered trade mark of the plaintiff and thatthe goods or services of the defendant are identical with the goods

[2022] 2 S.C.R.

Aor services covered by registered trade mark, the Court shallpresume that it is likely to cause confusion on the part of thepublic. [Paras 42, 43][349-B-F]

1.2 This Court has pointed out the distinction between thecauses of action and right to relief in suits for passing off and forBinfringement of registered trade mark. It has been held that theessentials of passing off action with those in respect of an actioncomplaining of an infringement of registered trade mark, cannotbe equated. It has been held that though an action for passing offis Common Law remedy being an action for deceit, that is, apassing off by person of his own goods as those of another; theCaction for infringement is statutory right conferred on theregistered proprietor of registered trade mark for thevindication of the exclusive rights to the use of the trade mark inrelation to those goods. The use by the defendant of the trademark of the plaintiff is sine qua non in the case of an action forDinfringement. It has further been held that if the essential featuresof the trade mark of the plaintiff have been adopted by thedefendant, the fact that the get-up, packing and other writing ormarks on the goods or on the packets in which he offers his goodsfor sale show marked differences, or indicate clearly trade origindifferent from that of the registered proprietor of the mark, wouldEbe immaterial in case of infringement of the trade mark, whereasin the case of passing off, the defendant may escape liability ifhe can show that the added matter is sufficient to distinguish hisgoods from those of the plaintiff. The question to be asked in aninfringement action is as to whether the defendant is using markFwhich is same as, or which is colourable imitation of the plaintiff’sregistered trade mark. Though the get up of the defendant’sgoods may be so different from the plaintiff’s goods and the pricesmay also be so different that there would be no probability ofdeception of the public, nevertheless even in such cases, i.e., inan infringement action, an injunction would be issued as soon asGit is proved that the defendant is improperly using the plaintiff’smark. No case of actual deception nor any actual damage needsto be proved in such cases. Though two actions are closely similarin 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 islikely to deceive or cause confusion. [Paras 45, 47][351-C-G;353-B-E]

Ruston & Hornsby Limited v. Zamindara EngineeringCo. (1969) 2 SCC 727 – relied on.

2.1 In the present case, both the trial court and the HighCourt have come to the conclusion that the trade mark of therespondents-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, thetrial court had rightly held that the goods of the appellant-plaintiffwould be covered by Section 29(2)(c) read with Section 29(3) ofthe said Act. However, the High Court, while reversing the decreeof injunction granted by the trial court, has held that the appellant-plaintiff had failed to establish that the trade mark has reputationin India and that the respondents-defendants’ use thereof washonest and further that there was no confusion likely to be createdin the minds of the consumers inasmuch as the class of consumerswas totally different. It appears that the High Court has reliedonly on clause (c) of sub-section (4) of Section 29 of the said Actto arrive at such conclusion. The High Court has totally erredin taking into consideration only clause (c) of sub-section (4) ofSection 29 of the said Act. It is to be noted that, whereas, thelegislature has used the word ‘or’ after clauses (a) and (b) insub-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 ofthe said Act. It could thus be seen that the legislative intent isvery clear. Insofar as sub-section (2) of Section 29 of the said Actis concerned, it is sufficient that any of the conditions as providedin clauses (a), (b) or (c) is satisfied. It is further clear that in caseof an eventuality covered under clause (c) of sub-section (2) ofSection 29 in view of the provisions of sub-section (3) of Section29 of the said Act, the Court shall presume that it is likely tocause confusion on the part of the public. The perusal ofsub-section (4) of Section 29 of the said Act would reveal that the

EFG

Asame deals with an eventuality when the impugned trade mark isidentical with or similar to the registered trade mark and is usedin relation to goods or services which are not similar to those forwhich the trade mark is registered. Only in such an eventuality,it will be necessary to establish that the registered trade markhas reputation in India and the use of the mark without dueBcause takes unfair advantage of or is detrimental to, the distinctivecharacter or repute of the registered trade mark. The legislativeintent 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 thethree conditions are satisfied, it will not be open to the proprietorCof the registered trade mark to sue for infringement when thoughthe impugned trade mark is identical with the registered trademark, but is used in relation to goods or services which are notsimilar to those for which the trade mark is registered. To sumup, while sub-section (2) of Section 29 of the said Act deals withthose situations where the trade mark is identical or similar andDthe goods covered by such trade mark are identical or similar,sub-section (4) of Section 29 of the said Act deals with situationswhere though the trade mark is identical, but the goods orservices are not similar to those for which the trade mark isregistered. [Paras 48-52][353-E-H; 354-A-G]E2.2 Undisputedly, the appellant-plaintiff’s trade mark“RENAISSANCE” is registered in relation to goods and servicesin Class 16 and Class 42 and the mark “SAI RENAISSANCE”,which is identical or similar to that of the appellant-plaintiff’s trademark, was being used by the respondents-defendants in relationFto the goods and services similar to that of the appellant-plaintiff’s.In these circumstances, it was not open for the High Court tohave entered into the discussion as to whether the appellant-plaintiff’s trade mark had reputation in India and the use of themark without due cause takes unfair advantage of or is detrimental

to, the distinctive character or repute of the registered tradeGmark. The High Court has erred in entering into the discussionas to whether the respondents-defendants and the appellant-plaintiff cater to different classes of customers and as to whetherthere was likely to be confusion in the minds of consumers with

regard to the hotel of the respondents-defendants belonging tothe same group as of the appellant-plaintiff’s. in an action forinfringement, once it is found that the defendant’s trade markwas identical with the plaintiff’s registered trade mark, the Courtcould not have go into an enquiry whether the infringement issuch as is likely to deceive or cause confusion. In an infringementaction, an injunction would be issued as soon as it is proved thatthe defendant is improperly using the trade mark of the plaintiff.[Paras 53, 54][354-G-H; 355-A-D]2.3 It is not in dispute that the appellant-plaintiff’s trademark “RENAISSANCE” is registered under Class 16 and Class42, 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 therespondents-defendants, was also in relation to Class 16 and Class42. As such, the use of the word “RENAISSANCE” by therespondents-defendants as part of their trade name or businessconcern, would squarely be hit by sub-section (5) of Section 29 ofthe said Act. It is further to be noted that the words“RENAISSANCE” and “SAI RENAISSANCE” are phoneticallyas well as visually similar. Sub-section (9) of Section 29 of thesaid Act provides that where the distinctive elements of aregistered trade mark consist of or include words, the trade markmay be infringed by the spoken use of those words as well as bytheir visual representation. As such, the use of the word “SAIRENAISSANCE” which is phonetically and visually similar to“RENAISSANCE”, would also be an act of infringement in viewof the provisions of sub-section (9) of Section 29 of the said Act.Further, the High Court has relied on Section 30(1)(b) of the saidAct. The perusal of Section 30(1) of the said Act would revealthat for availing the benefit of Section 30 of the said Act, it isrequired that the twin conditions, i.e., the use of the impugnedtrade mark being in accordance with the honest practices inindustrial or commercial matters, and that such use is not suchas to take unfair advantage of or be detrimental to the distinctivecharacter or repute of the trade mark, are required to be fulfilled.In sub-section (1) of Section 30 of the said Act, after clause (a),

[2022] 2 S.C.R.

Athe word used is ‘and’, like the one used in sub-section (4) ofSection 29 of the said Act, in contradistinction to the word ‘or’used in sub-section (2) of Section 29 of the said Act. The HighCourt has referred only to the condition stipulated in clause (b)of sub-section (1) of Section 30 of the said Act ignoring the factthat, to get the benefit of sub-section (1) of Section 30 of the saidBAct, both the conditions had to be fulfilled. Unless it is establishedthat such use is in accordance with the honest practices inindustrial or commercial matters, and is not to take unfairadvantage or is not detrimental to the distinctive character orrepute of the trade mark, one could not get benefit under SectionC30(1) of the said Act. As such, the finding in this regard by theHigh Court is also erroneous. [Paras 55-57, 59][355-E-H;356-A; 356-E-H; 357-A]

2.4 The High Court has failed to take into considerationtwo important principles of interpretation. The first one being ofDtextual and contextual interpretation. While interpreting theprovisions of statute, it is necessary that the textualinterpretation should be matched with the contextual one. TheAct must be looked at as whole and it must be discovered whateach section, each clause, each phrase and each word is meantand designed to say as to fit into the scheme of the entire Act. NoEpart of statute and no word of statute can be construed inisolation. Statutes have to be construed so that every word has aplace and everything is in its place. The said Act has been enactedby the legislature taking into consideration the increasedglobalization of trade and industry, the need to encourageFinvestment flows and transfer of technology, and the need forsimplification and harmonization of trade mark managementsystems. One of the purposes for which the said Act has beenenacted is prohibiting the use of someone else’s trade mark as apart of the corporate name or the name of business concern. Ifthe entire scheme of the Act is construed as whole, it providesGfor the rights conferred by registration and the right to sue forinfringement of the registered trade mark by its proprietor. Thelegislative scheme as enacted under the said statute elaboratelyprovides for the eventualities in which proprietor of theregistered trade mark can bring an action for infringement of theH

trade mark and the limits on effect of the registered trade mark.By picking up part of the provisions in sub-section (4) of Section29 of the said Act and part of the provision in sub-section (1) ofSection 30 of the said Act and giving it textual meaning withoutconsidering the context in which the said provisions have to beconstrued would not be permissible. The High Court fell in errorin doing so. Another principle that the High Court has failed tonotice is that part of section cannot be read in isolation.Ignoring this principle, the High Court has picked up clause (c)of sub-section (4) of Section 29 of the said Act in isolation withouteven noticing the other provisions contained in the saidsub-section (4) of Section 29 of the said Act. Similarly, again whileconsidering the import of sub- section (1) of Section 30 of thesaid Act, the High Court has only picked up clause (b) ofsub-section (1) of Section 30 of the said Act, ignoring theprovisions contained in clause (a) of the said sub-section (1) ofSection 30 of the said Act. [Paras 60-63][357-A-B, G-H;358-A-E; 359-A-B]

Reserve Bank of India v. Peerless General Finance andInvestment Co. Ltd. and Others (1987) 1 SCC 424 :

[1987] 2 SCR 1; Balasinor Nagrik Cooperative BankLtd. v. Babubhai Shankerlal Pandya and Others (1987)1 SCC 606; Kalawatibai v. Soiryabai and Others (1991)3 SCC 410 : [1991] 2 SCR 599 – relied on.

2.5 The High Court fell in error on various counts. Thepresent case stood squarely covered by the provisions of Section29(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 intaking into consideration clause (c) of sub-section (4) of Section29 of the said Act in isolation without noticing other parts of thesaid sub-section (4) of Section 29 of the said Act and the importthereof. The High Court has failed to take into considerationthat in order to avail the benefit of Section 30 of the said Act,apart from establishing that the use of the impugned trade markwas not such as to take unfair advantage of or is detrimental tothe distinctive character or repute of the trade mark, it is alsonecessary to establish that such use is in accordance with the

Ahonest practices in industrial or commercial matters. The HighCourt was not justified in interfering with the well-reasoned orderof the trial court. The High Court fell in error by interfering withthe well-reasoned order of the trial court. The impugned judgmentand order passed by the High Court is quashed and set aside.The judgement and decree passed by the trial court is maintained.B[Paras 71-73][361-F-H; 362-A-D]

Khoday Distilleries Limited (Now known as KhodayIndia Limited) v. Scotch Whisky Association and Other(2008) 10 SCC 723: [2008] 9 SCR 975; NandhiniDeluxe v. Karnataka Cooperative Milk ProducersCFederation Limited (2018) 9 SCC 183: [2018] 11 SCR275; Neon Laboratories Limited v. Medical TechnologiesLimited and Others (2016) 2 SCC 672: [2015] 10 SCR684 – held inapplicable.

Kaviraj Pandit Durga Dutt Sharma v. NavaratnaDPharmaceutical Laboratories [1965] 1 SCR 737 –relied on.

Midas Hygiene Industries (P) Limited and Another v.Sudhir Bhatia and Others (2004) 3 SCC 90 – explained.

EM/s The RENAISSANCE, Cochin v. M/s RENAISSANCEHotels Inc. Marriotr Decision of Kerala High Court dtd.28.04.2009 in RFA No. 235 of 2008; Laxmikant V. Patelv. Chetanbhai Shah and Another (2002) 3 SCC 65:[2001] 5 Suppl. SCR 435; Corn Products Refining Co.v. Shangrila Food Products Limited [1960] 1 SCR 968F– referred to.

Case Law Reference

CIVIL APPELLATE JURISDICTION: Civil Appeal No. 404 of2022.

From the Judgment and Order dated 12.04.2019 of the High Courtof Karnataka at Bengaluru in Regular First Appeal No.1462 of 2012(IPR).

K. V. Vishwanathan, Sr. Adv., Pravin Anand, Ms. Vaishali Mittal,Vikas Singh Jangra, Siddhant Chamola, Souradeep Mukhopadhyay, Advs.for the Appellant.

B. C. Sitarama Rao, N. K. Verma, Ms. Anjana Chandrashekar,Advs. for the Respondents.

The Judgment of the Court was delivered by

B. R. GAVAI, J.

1. Leave granted.

2. This appeal challenges the judgment and order dated 12[th] April2019 passed by the Single Judge of the High Court of Karnataka atBengaluru in Regular First Appeal No. 1462 of 2012, thereby allowingthe appeal filed by the respondents-defendants herein and setting asidethe judgement and decree of the Principal District Judge, BangaloreRural District, Bangalore (hereinafter referred to as the “trial court”),dated 21[st] June 2012 passed in O.S. No. 3 of 2009, in favour of theappellant-plaintiff herein.

3. The facts in brief giving rise to the filing of the present appealare as under:

The appellant-plaintiff filed suit being O.S. No. 3 of 2009 beforethe trial court claiming decree of permanent injunction to restrain therespondents-defendants from using the trade mark “SAI RENAISSANCE”or any other trade mark identical with the appellant-plaintiff’s trade mark

A“RENAISSANCE”, and from opening, operating, managing, franchising,licensing, dealing directly or indirectly in hotels, restaurant or hospitalityservices of any manner under the trade mark “RENAISSANCE”, andto deliver all the goods, label or any other printed material bearing theimpugned mark “SAI RENAISSANCE” or “RENAISSANCE” and fordamages amounting to Rs.3,50,000/- for having used its trade mark.B

4. It is the case of the appellant-plaintiff that it is companyincorporated under the laws of the State of Delaware, United States ofAmerica. It is the further case of the appellant-plaintiff that it is theholder and proprietor of the trade mark and service mark“RENAISSANCE” in relation to hotel, restaurant, catering, bar, cocktailClounge, fitness club, spa services, etc. It is the further case of the appellant-plaintiff that the trade mark “RENAISSANCE” has also been used inrelation to 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 theDappellant-plaintiff’s trade mark “RENAISSANCE”. It is the case of theappellant-plaintiff that the trade mark “RENAISSANCE” has been usedby 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 itis using the trade mark “RENAISSANCE” in India since 1990. It is thecase of the appellant-plaintiff that it also runs hotel and conventionEcentre in Mumbai and in Goa. That it also owns registration for thedomain name www.renaissancehotels.comand spends about US$ 14million annually for worldwide advertisements and promotional activities.5. It is the further case of the appellant-plaintiff that it has theregistration for the trade mark and service mark “RENAISSANCE” inFIndia, under Registration No. 610567 in Class 16 for “printed matter,periodicals, books, stationery, manuals, magazines, instructional andteaching materials and office requisites” and Registration No. 1241271in Class 42 for “hotel, restaurant, catering, bar and cocktail loungeservices, provisions of facilities for meetings, conferences and exhibitions,Greservation services for hotel accommodations”, respectively.

6. According to the appellant-plaintiff, it came across website atwww.sairenaissance.comthrough which it discovered that therespondents-defendants were operating one hotel in Bangalore andanother one in Puttaparthi under the impugned name “SAIHRENAISSANCE”, which wholly incorporates the appellant-plaintiff’s

well-known trade mark and service mark “RENAISSANCE”. Theappellant-plaintiff immediately instructed that an investigation be carriedout and sought legal advice with regard to the violation of its intellectualproperty. Upon investigation, it was revealed that the respondents-defendants were running one hotel at Kadugodi, near Whitefield RailwayStation, Bangalore and another one at By-Pass Road, Puttaparthi. Itwas further revealed that the respondents-defendants were copyingappellant-plaintiff’s trade mark “RENAISSANCE”, its stylizedrepresentation, signage and business cards and leaflets. It is the case ofthe appellant-plaintiff that this was done in such manner so as to suggestan affiliation, association, nexus or connection with the business of theappellant-plaintiff. The appellant-plaintiff, therefore, claimed infringementof its registered trade mark “RENAISSANCE” in Class 16 and Class42. The appellant-plaintiff further contended that similar suit institutedby it at Kochi being C.S. No. 5 of 2005 before the District Court atErnakulam was decreed in its favour vide judgment dated 31[st] January2008.

7. The respondents-defendants resisted the claim of the appellant-plaintiff by filing their written statement. It was contended that the suitwas liable to be dismissed on account of delay, laches and acquiescence.It was further contended that “RENAISSANCE” is generic word andno such exclusive rights can be claimed over it in India as it is neither awell-known mark, nor it has any reputation built up by the appellant-plaintiff. It is the case of the respondents-defendants that they are ardentdevotees of Sri Shirdi Sai Baba and Sri Puttaparthi Sai Baba. It is thebelief of all the devotees of Sri Sai Baba including the first respondent-defendant that Sri Puttaparthi Sai Baba is the reincarnation of Sri ShirdiSai Baba and therefore, the first respondent-defendant used the dictionaryword “RENAISSANCE” after the name of Sri Shirdi Sai Baba andadopted the name “SAI RENAISSANCE”. It is the case of the firstrespondent-defendant that he has been running the hotel for the last 15years. According to the first respondent-defendant, the hotel at Kadugodinear Whitefield was established in the year 2001 near the Ashram of SriSai Baba. It is the case of the first respondent-defendant that the hotelwas established so as to provide facilities to the devotees of Sri SaiBaba. The respondents-defendants further submitted that even the firstrespondent-defendant was not aware that the appellant-plaintiff hadestablished any such hotel by incorporating the word “RENAISSANCE”in its name till he received suit summons in the said case.

A8. It is contended by the respondents-defendants that the word“RENAISSANCE” is commonly found in the dictionary and is used bya large number of people and therefore, the trade mark“RENAISSANCE” has not become distinctive with the appellant-plaintiffas claimed by it. It is submitted by the respondents-defendants that“RENAISSANCE” is neither coined word nor an inventive mark. It isBfurther the case of the respondents-defendants that the appellant-plaintiff’s mark “RENAISSANCE” registered under Class 42 is subjectto rectification proceedings, and as such, the appellant-plaintiff cannotclaim that they are the registered proprietors of the said trade mark“RENAISSANCE”.C

9. It is the further case of the respondents-defendants that theclass of customers to which they were catering was totally differentfrom 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-Ddefendants did not provide non-vegetarian food and alcoholic drinks toits customers. It was therefore contended that there was no possibilityof confusion being created in the minds of the customers that the hotelof the respondents-defendants belonged to or was affiliated to theappellant-plaintiff.

10. The trial court framed the following issues:E

“1.Whether the Plaintiff is the registered proprietor of the trademark/service mark “RENAISSANCE” under the TradeMark Act 1999?

2.Whether the plaintiff is the proprietor of trade mark/servicemark “Renaissance” on account of prior adoption and useFin relation to hotels and hospitality business?

3.Whether the plaintiff proves that the defendant is infringingthe trade mark of the plaintiff?

4.Whether the plaintiff proves that the action of defendant isone of passing off?

5.Whether the plaintiff is entitled to an order for delivery ofgoods, labels or any other printed materials?

6.Whether plaintiff is entitled for rendition of accounts anddamages?

H7.To what reliefs and decree the parties are entitled for?

Additional Issues

1.Whether the suit is not maintainable for want of signingand verification of the plaint by person having locus standi?

2.Whether the defendants prove that they have been honestlyand continuously using the trade mark HotelBSAIRenaissance?”

11. The trial court answered the aforesaid issues as under:

“12. My answer to the above issues are as under:

12. The trial court after considering the evidence on record andcontentions raised on behalf of the parties, partly decreed the suit byrestraining the respondents-defendants from using the trade mark “SAIRENAISSANCE” or any other trade mark which incorporates theappellant-plaintiff’s trade mark “RENAISSANCE” or is deceptivelysimilar thereto in relation to or upon printed matter, periodicals, books,instructional and teaching materials, stationery, manuals, magazines andoffice requisites amounting to infringement of the appellant-plaintiff’sregistered trade mark No. 610567 in Class 16 and for hotel, restaurant,catering, bar and cocktail lounge services, provision of facilities formeetings, conferences and exhibitions, reservation services for hotelaccommodations amounting to infringement of the appellant-plaintiff’sregistered trade mark No. 1241271 in Class 42. The trial court furtherrestrained 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 markor service mark “RENAISSANCE” or any deceptively similar mark“RENAISSANCE” or any deceptively similar mark including on the

Ainternet as domain name www.sairenaissance.comor in any mannerso 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.

B13. The High Court observed that the evidence produced by theappellant-plaintiff did not disclose that trans-border reputation wasearned by it to uphold its plea in that regard. The High Court furtherobserved that the appellant-plaintiff is 5 Star hotel but the respondents-defendants’ hotel is not of that standard. The High Court further observedthat no evidence was produced by the appellant-plaintiff to show thatCthe respondents-defendants were taking unfair advantage of its trademark or that the use of the word “SAI RENAISSANCE” wasdetrimental to the distinctive character or reputation of the appellant-plaintiff’s trade mark.

D14. Insofar as the judgment of the Kerala High Court in the caseof M/s The RENAISSANCE, Cochin v. M/s RENAISSANCE HotelsInc. Marriotr[1] in which injunction was granted in favour of the plaintiffagainst the Hotel (RENAISSANCE, COCHIN) is concerned, the HighCourt observed that the said judgment was not applicable to the facts ofthe present case. It was observed that in the said case, one of theEcustomers had claimed that he was misled to believe that “TheRENAISSANCE, COCHIN” was part of the plaintiff’s hotel chainand therefore, he resided there. The High Court observed that in thepresent case, none of the customers had made such claim. It furtherobserved that the witness of the appellant-plaintiff had admitted that the

Frespondents-defendants serve only vegetarian food without liquor andthat he had no idea that the respondents-defendants had established twohotels exclusively for serving the devotees of Satya Sai Baba atPuttaparthi and Bengaluru, respectively. The High Court further observedthat the evidence on record shows that the respondents-defendants havenot taken unfair advantage, or that its existence was detrimental to theGdistinctive character or reputation of the appellant-plaintiff’s trade mark.The High Court, therefore, observed that there was no infringement oftrade mark, and as such, allowed the appeal filed by the respondents-defendants herein by setting aside the judgement and decree dated 21[st]

June 2012 passed by the trial court and dismissed the suit. Being aggrievedthereby, the appellant-plaintiff has approached this Court.

15. We have heard Shri K.V. Viswanathan, learned Senior Counselappearing on behalf of the appellant-plaintiff and Shri B.C. SitaramaRao, 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 toas the “said Act”) would be applicable in the present case, where theclass of goods or services is identical or similar. He submitted that,however, the High Court has grossly erred in applying the test as providedunder Section 29(4) of the said Act. The learned Senior Counsel submittedthat the High Court has further erred in only referring to the conditionstipulated in clause (c) of Section 29(4) of the said Act. He submittedthat Section 29(4) of the said Act would be applicable only if all the threeconditions specified therein are satisfied. The learned Senior Counselfurther submitted that the High Court has also failed to take intoconsideration that since the respondents-defendants were using theappellant-plaintiff’s registered trade mark “RENAISSANCE” as partof their trade name for the hotels and as part of the name of theirbusiness concern, it squarely falls under sub-section (5) of Section 29 ofthe said Act and therefore, the respondents-defendants were liable forinfringement of registered trade mark.17. Shri Viswanathan further submitted that merely because therespondents-defendants were using the prefix “SAI” before theregistered trade mark of the appellant-plaintiff, it would not save themfrom an action for infringement of the registered trade mark. He furthersubmitted that the High Court, even after observing that the appellant-plaintiff was prior user and registered proprietor in respect of the mark“RENAISSANCE” and having held that the respondents-defendantshad adopted and had been using the registered trade mark of the appellant-plaintiff “RENAISSANCE” along with the prefix “SAI” and that bothof them are in the hotels and hospitality business, has totally erred inholding that there was no infringement of the appellant-plaintiff’s trademark. The learned Senior Counsel in support of this proposition, relieson the judgment of this Court in the case of Laxmikant V. Patel v.Chetanbhai Shah and Another[2].

A18. Shri Viswanathan further submitted that the test of deceptionor confusion has been wrongly applied by the High Court inasmuch as,in an action for infringement, where the respondents-defendants’ trademark is identical with the appellant-plaintiff’s trade mark, such testwould not be applicable. In support of this proposition, he relies on thejudgment of this Court in the case of Ruston & Hornsby Limited v.BZamindara 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 isclose either visually, phonetically or otherwise, and once it is found bythe Court that there is an imitation, no further evidence is required toCestablish that the plaintiff’s rights are violated. Reliance in this respect isplaced on the judgment of this Court in the case of Kaviraj PanditDurga Dutt Sharma v. Navaratna Pharmaceutical Laboratories[4].

20. The learned Senior Counsel further submitted that the HighCourt, while reversing the judgement and decree passed by the trialDcourt, has not applied the law correctly, as laid down by this Court in thecase of Midas Hygiene Industries (P) Limited and Another v. SudhirBhatia and Others[5].

21. Shri Sitarama Rao, learned counsel appearing on behalf ofthe respondents-defendants, submitted that the very suit filed by theEappellant-plaintiff itself was not maintainable inasmuch as the appellant-plaintiff was not legal person. It is further submitted that“RENAISSANCE” is generic English word and the appellant-plaintiffcannot claim monopoly of the same. He submitted that the respondentNo. 1 was named “Vijaya Sai” by his parents as they believed that heFwas born as result of the prayers made to Sri Sai Baba. It is furthersubmitted that “RENAISSANCE” means “re-birth” and that the name“SAI RENAISSANCE” was adopted for his hotel to signify the birthof Sri Puttaparthi Sai Baba as reincarnation of Sri Shirdi Sai Babaand that the use of mark “SAI RENAISSANCE” amounts to honestconcurrent use under Section 12 of the said Act. He further submittedGthat the appellant-plaintiff acquiesced to the respondents-defendants’use of the mark inasmuch as the suit came to be filed after long timegap.

3 (1969) 2 SCC 7274 [1965] 1 SCR 737H5 (2004) 3 SCC 90

22. Shri Sitarama Rao submitted that the High Court has rightlyheld that the respondents-defendants’ usewas honest and that thereasoning given by them for adopting the word “SAI RENAISSANCE”was justifiable. He further submitted that the High Court has rightly heldthat the class of customers to which the appellant-plaintiff and therespondents-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 KhodayDistilleries Limited (Now known as Khoday India Limited) v. ScotchWhisky Association and Others[6], Nandhini Deluxe v. KarnatakaCooperative Milk Producers Federation Limited[7], Corn ProductsRefining Co. v. Shangrila Food Products Limited[8] and NeonLaboratories Limited v. Medical Technologies Limited and Others[9].

24. Shri Viswanathan, in rejoinder, has placed certain documentson record to show that the respondents-defendants have alreadydiscontinued the use of the term “RENAISSANCE” from the name oftheir hotel, signage, etc., and as such, accepted that their use of the term“RENAISSANCE” amounted to infringement of the appellant-plaintiff’strade mark.

25. For appreciation of the rival controversy, it will be appropriateto briefly refer to the legislative scheme with regard to the trade marklaws.

26. On the day when India attained independence, the law withregard to registration and effective protection of trade marks wasgoverned by The Trade Marks Act, 1940 (hereinafter referred to as the“1940 Act”). Section 21 of the 1940 Act provided for the right conferredby registration and the exclusive right to use of the trade mark to theregistered proprietor of the trade mark and infringement thereof. Section21 of the 1940 Act reads thus:

“21. Right conferred by registration.— (1) Subject to theprovisions of Sections 22, 25 and 26, the registration of person

6 (2008) 10 SCC 723

7 (2018) 9 SCC 183

8 [1960] 1 SCR 968

9 (2016) 2 SCC 672

Ain the register as proprietor of trade mark in respect of anygoods shall give to that person the exclusive right to the use of thetrade mark in relation to those goods and, without prejudice to thegenerality of the foregoing provision, that right shall be deemed tobe infringed by any person who, not being the proprietor of thetrade mark or registered user thereof using by way of theBpermitted use, uses mark identical with it or so nearly resemblingit as to be likely to deceive or cause confusion, in the course oftrade, 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 betaken either—

(a) as being used as trade mark; or

(b) to import reference to some person having the righteither as proprietor or as registered user to use the trademark or to goods with which such person as aforesaid isconnected in the course of trade.”

27. The legislature noticed that the 1940 Act was enacted prior toattaining independence, and after attaining independence, the developmentin the field of commerce and industry was quite rapid, and it was foundthat the law relating to trade marks was not adequate enough to meetEthe growing demands. Accordingly, The Trade and Merchandise MarksAct, 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) registered trade markis infringed by person who, not being the registered proprietorof the trade mark or registered user thereof using by way ofpermitted use, uses in the course of trade mark which is identicalwith, or deceptively similar to, the trade mark, in relation to anygoods in respect of which the trade mark is registered and in suchmanner as to render the use of the mark likely to be taken asbeing used as trade mark.

(2) In an action for infringement of trade mark registered inPart of the register an injunction or other relief shall not begranted to the plaintiff if the defendant establishes to thesatisfaction of the court that the use of the mark of which the

plaintiff complains is not likely to deceive or cause confusion or tobe taken as indicating connection in the course of trade betweenthe goods in respect of which the trade mark is registered andsome person having the right, either as registered proprietor or asregistered user, to use the trade mark.”

28. Thereafter, in view of the developments in trading andcommercial practices, increasing globalization of trade and industry, theneed to encourage investment flows and transfer of technology, and theneed for simplification and harmonization of trade mark managementsystems, it was found necessary by the Parliament to repeal the 1958Act and enact new Act, i.e., the said Act. It will be relevant to refer tothe Statement of Objects and Reasons of the said Act:

“The Trade and Merchandise Marks Act, 1958 has served itspurpose over the last four decades. It was felt that acomprehensive review of the existing law be made in view ofdevelopments in trading and commercial practices, increasingglobalization of trade and industry, the need to encourage investmentflows and transfer of technology, need for simplification andharmonization of trade mark management systems and to giveeffect 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 ofcorporate names, or name of business concern;

29. The Trade Marks Bill of 1999 was passed by both the Housesof Parliament and the assent of the President was received on 30[th]December 1999. It came into force on 15[th] September 2003. It will berelevant to refer to Sections 28 and 29 of the said Act:

“28. Rights conferred by registration.—(1) Subject to the otherprovisions of this Act, the registration of trade mark shall, ifvalid, give to the registered proprietor of the trade mark theexclusive right to the use of the trade mark in relation to the goodsor services in respect of which the trade mark is registered and toobtain relief in respect of infringement of the trade mark in themanner provided by this Act.

(2) The exclusive right to the use of trade mark given undersub-section (1) shall be subject to any conditions and limitations towhich the registration is subject.

(3) Where two or more persons are registered proprietors of trademarks, 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 conditionsor limitations entered on the register) be deemed to have beenacquired by any one of those persons as against any other ofthose persons merely by registration of the trade marks but eachof those persons has otherwise the same rights as against otherpersons (not being registered users using by way of permitteduse) as he would have if he were the sole registered proprietor.29. Infringement of registered trade marks.—(1) registeredtrade mark is infringed by person who, not being registeredproprietor or person using by way of permitted use, uses in thecourse of trade, mark which is identical with, or deceptivelysimilar to, the trade mark in relation to goods or services in respectof which the trade mark is registered and in such manner as torender the use of the mark likely to be taken as being used as atrade mark.

(2) registered trade mark is infringed by person who, notbeing registered proprietor or person using by way of permitteduse, uses in the course of trade, mark which because of—

(a)its identity with the registered trade mark and thesimilarity of the goods or services covered by suchregistered trade mark; or

(b)its similarity to the registered trade mark and the identityor similarity of the goods or services covered by suchregistered trade mark; or

(c)its identity with the registered trade mark and the identityof the goods or services covered by such registeredtrade mark,

is likely to cause confusion on the part of the public, or which islikely to have an association with the registered trade mark.

(3) In any case falling under clause (c) of sub-section (2), thecourt shall presume that it is likely to cause confusion on the partof the public.

(4) registered trade mark is infringed by person who, notbeing registered proprietor or person using by way of permitteduse, uses in the course of trade, 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 notsimilar to those for which the trade mark is registered;and

(c)the registered trade mark has reputation in India andthe use of the mark without due cause takes unfairadvantage of or is detrimental to, the distinctive characteror repute of the registered trade mark.

(5) registered trade mark is infringed by person if he usessuch registered trade mark, as his trade name or part of his tradename, or name of his business concern or part of the name, of hisbusiness concern dealing in goods or services in respect of whichthe trade mark is registered.

(6) For the purposes of this section, person uses registeredmark, 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 registeredtrade mark, or offers or supplies services under theregistered trade mark;

(c)imports or exports goods under the mark; or

(d)uses the registered trade mark on business papers or inadvertising.

(7) registered trade mark is infringed by person who appliessuch registered trade mark to material intended to be used forlabelling or packaging goods, as business paper, or for advertisinggoods or services, provided such person, when he applied themark, knew or had reason to believe that the application of themark was not duly authorised by the proprietor or licensee.

A(8) registered trade mark is infringed by any advertising of thattrade mark if such advertising—

(a)takes unfair advantage of and is contrary to honestpractices 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 registered trade markconsist of or include words, the trade mark may be infringed bythe spoken use of those words as well as by their visualrepresentation and reference in this section to the use of markshall be construed accordingly.”

30. Sub-section (1) of Section 28 of the said Act provides thatsubject to the other provisions of the said Act, the registration of trademark shall, if valid, give to the registered proprietor of the trade mark theDexclusive right to the use of the trade mark in relation to the goods orservices in respect of which the trade mark is registered and to obtainrelief in respect of infringement of the trade mark in the manner providedby the said Act. Sub-section (2) of Section 28 of the said Act providesthat the exclusive right to the use of trade mark given under sub-section (1) of Section 28 of the said Act shall be subject to any conditionsEand limitations to which the registration is subject. The provisions ofsub-section (3) of Section 28 of the said Act would not be relevant forthe purpose of the present case.

31. Sub-section (1) of Section 29 of the said Act provides that aregistered trade mark is infringed by person who, not being registeredFproprietor or person using by way of permitted use, uses in the courseof trade, mark which is identical with, or deceptively similar to, thetrade mark in relation to goods or services in respect of which the trademark is registered and in such manner as to render the use of the marklikely to be taken as being used as trade mark. Sub-section (2) ofSection 29 of the said Act provides that registered trade mark isGinfringed by person who, not being registered proprietor or personusing by way of permitted use, uses in the course of trade, mark whichbecause of its identity with the registered trade mark and the similarityof the goods or services covered by such registered trade mark; or itssimilarity to the registered trade mark and the identity or similarity of theHgoods or services covered by such registered trade mark; or its identity

with the registered trade mark and the identity of the goods or servicescovered by such registered trade mark, is likely to cause confusion onthe part of the public, or which is likely to have an association with theregistered trade mark. Sub-section (3) of Section 29 of the said Act is ofvital importance. It provides that in any case falling under clause (c) ofsub-section (2) of Section 29 of the said Act, the court shall presumethat it is likely to cause confusion on the part of the public.

32. perusal of sub-section (2) of Section 29 of the said Actwould reveal that registered trade mark would be infringed by person,who not being registered proprietor or person using by way ofpermitted use, uses in the course of trade, mark which because of thethree eventualities mentioned in clauses (a), (b) and (c), is likely to causeconfusion on the part of the public, or which is likely to have an associationwith the registered trade mark. The first eventuality covered by clause(a) being its identity with the registered trade mark and the similarity ofthe goods or services covered by such registered trade mark. The secondone covered by clause (b) being its similarity to the registered trademark and the identity or similarity of the goods or services covered bysuch registered trade mark. The third eventuality stipulated in clause (c)would be its identity with the registered trade mark and the identity ofthe 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 theeventuality contained in clause (c) is concerned, is clear. Sub-section (3)of Section 29 of the said Act provides that in any case falling underclause (c) of sub-section (2) of Section 29 of the said Act, the Courtshall presume that it is likely to cause confusion on the part of the public.

34. Sub-section (4) of Section 29 of the said Act provides that aregistered trade mark is infringed by person who, not being registeredproprietor or person using by way of permitted use, uses in the courseof trade, mark which is identical with or similar to the registered trademark; and is used in relation to goods or services which are not similar tothose for which the trade mark is registered; and the registered trademark has reputation in India and the use of the mark without duecause takes unfair advantage of or is detrimental to, the distinctivecharacter or repute of the registered trade mark.

35. Sub-section (5) of Section 29 of the said Act provides that aregistered trade mark is infringed by person if he uses such registered

Atrade mark, as his trade name or part of his trade name, or name of hisbusiness concern or part of the name, of his business concern dealing ingoods or services in respect of which the trade mark is registered.

36. Sub-section (6) of Section 29 of the said Act provides that forthe purposes of this section, person uses registered mark, if, inBparticular, he affixes it to goods or the packaging thereof; offers orexposes goods for sale, puts them on the market, or stocks them forthose purposes under the registered trade mark, or offers or suppliesservices under the registered trade mark; imports or exports goods underthe mark; or uses the registered trade mark on business papers or inadvertising.C

37. Sub-section (7) of Section 29 of the said Act provides that aregistered trade mark is infringed by person who applies such registeredtrade mark to material intended to be used for labelling or packaginggoods, as business paper, or for advertising goods or services, providedsuch person, when he applied the mark, knew or had reason to believeDthat the application of the mark was not duly authorized by the proprietoror licensee.

38. Sub-section (8) of Section 29 of the said Act provides that aregistered trade mark is infringed by any advertising of that trade markif such advertising takes unfair advantage of and is contrary to honestEpractices in industrial or commercial matters; or is detrimental to itsdistinctive character; or is against the reputation of the trade mark.

39. Sub-section (9) of Section 29 of the said Act provides thatwhere the distinctive elements of registered trade mark consist of orinclude words, the trade mark may be infringed by the spoken use ofFthose words as well as by their visual representation and reference inthis section to the use of mark shall be construed accordingly.

40. Section 30 of the said Act deals with the limits on effect ofregistered trade mark. Section 30 of the said Act, which would also beof vital importance in the present case, reads thus:“G30. Limits on effect of registered trade mark.—(1) Nothingin Section 29 shall be construed as preventing the use of aregistered trade mark by any person for the purposes of identifyinggoods or services as those of the proprietor provided the use—

(a)is in accordance with honest practices in industrial orcommercial matters, and

(b)is not such as to take unfair advantage of or bedetrimental to the distinctive character or repute of thetrade mark.

(2) registered trade mark is not infringed where—

(a)the use in relation to goods or services indicates the kind,quality, quantity, intended purpose, value, geographicalBorigin, the time of production of goods or of rendering ofservices or other characteristics of goods or services;

(b)a trade mark is registered subject to any conditions orlimitations, the use of the trade mark in any manner inrelation to goods to be sold or otherwise traded in, inCany place, or in relation to goods to be exported to anymarket or in relation to services for use or available oracceptance in any place or country outside India or inany other circumstances, to which, having regard to thoseconditions or limitations, the registration does not extend;

(c)the use by person of trade mark—

(i)in relation to goods connected in the course oftrade with the proprietor or registered user ofthe trade mark if, as to those goods or bulk orwhich they form part, the registered proprietor orthe registered user conforming to the permitteduse has applied the trade mark and has notsubsequently removed or obliterated it, or has atany time expressly or impliedly consented to theuse of the trade mark; or

(ii)in relation to services to which the proprietor ofsuch mark or of registered user conforming tothe permitted use has applied the mark, wherethe purpose and effect of the use of the mark isto indicate, in accordance with the fact, that thoseservices have been performed by the proprietoror registered user of the mark;

(d)the use of trade mark by person in relation to goodsadapted to form part of, or to be accessory to, othergoods or services in relation to which the trade markhas been used without infringement of the right given by

registration under this Act or might for the time being beso used, if the use of the trade mark is reasonablynecessary in order to indicate that the goods or servicesare so adapted, and neither the purpose nor the effectof the use of the trade mark is to indicate, otherwisethan in accordance with the fact, connection in thecourse of trade between any person and the goods orservices, as the case may be;

(e)the use of registered trade mark, being one of two ormore trade marks registered under this Act which areidentical or nearly resemble each other, in exercise ofthe right to the use of that trade mark given by registrationunder this Act.

(3) Where the goods bearing registered trade mark are lawfullyacquired by person, the sale of the goods in the market orotherwise dealing in those goods by that person or by personclaiming under or through him is not infringement of trade by—reason only of[*]

(a)the registered trade mark having been assigned by theregistered proprietor to some other person, after theacquisition of those goods; or

(b)the goods having been put on the market under theregistered trade mark by the proprietor or with hisconsent.

(4) Sub-section (3) shall not apply where there exists legitimatereasons for the proprietor to oppose further dealings in the goodsin particular, where the condition of the goods, has been changedor 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 trade mark registeredunder this Act (including applications under Section 57), the originalregistration of the trade mark and of all subsequent assignmentsand transmissions of the trade mark shall be prima facie evidenceof the validity thereof.

(2) In all legal proceedings, as aforesaid registered trade markshall not be held to be invalid on the ground that it was not aregistrable trade mark under Section 9 except upon evidence ofdistinctiveness and that such evidence was not submitted to theRegistrar before registration, if it is proved that the trade markhad been so used by the registered proprietor or his predecessorin title as to have become distinctive at the date of registration.”

42. It could thus be seen that in all legal proceedings relating totrade mark registered under the said Act, the original registration of thetrade mark and of all subsequent assignments and transmissions of thetrade mark shall be prima facie evidence of the validity thereof.

43. The legislative scheme is clear that when the mark of thedefendant is identical with the registered trade mark of the plaintiff andthe goods or services covered are similar to the ones covered by suchregistered trade mark, it may be necessary to prove that it is likely tocause confusion on the part of the public, or which is likely to have anassociation with the registered trade mark. Similarly, when the trademark of the plaintiff is similar to the registered trade mark of the defendantand the goods or services covered by such registered trade mark areidentical or similar to the goods or services covered by such registeredtrade mark, it may again be necessary to establish that it is likely tocause confusion on the part of the public. However, when the trademark of the defendant is identical with the registered trade mark of theplaintiff and that the goods or services of the defendant are identicalwith the goods or services covered by registered trade mark, the Courtshall presume that it is likely to cause confusion on the part of the public.

44. Having considered the legislative scheme as has beenelaborately provided in the said Act, it will be apposite to refer to theobservations of this Court, while considering Section 21 of The TradeMarks Act, 1940 in the case of Kaviraj Pandit Durga Dutt Sharma(supra):

“28. The other ground of objection that the findings are inconsistentreally proceeds on an error in appreciating the basic differencesbetween the causes of action and right to relief in suits for passingoff and for infringement of registered trade mark and in equatingthe essentials of passing off action with those in respect of anaction complaining of an infringement of registered trade mark.We have already pointed out that the suit by the respondent

complained both of an invasion of statutory right under Section21 in respect of registered trade mark and also of passing offby the use of the same mark. The finding in favour of the appellantto which the learned counsel drew our attention was based upondissimilarity of the packing in which the goods of the two partieswere vended, the difference in the physical appearance of thetwo packets by reason of the variation in the colour and otherfeatures and their general get-up together with the circumstancethat the name and address of the manufactory of the appellantwas prominently displayed on his packets and these features wereall set out for negativing the respondent’s claim that the appellanthad passed off his goods as those of the respondent. These matterswhich are of the essence of the cause of action for relief on theground of passing off play but limited role in an action forinfringement of registered trade mark by the registered proprietorwho has statutory right to that mark and who has statutoryremedy for the event of the use by another of that mark or acolourable imitation thereof. While an action for passing off is aCommon Law remedy being in substance an action for deceit,that is, passing off by person of his own goods as those ofanother, that is not the gist of an action for infringement. Theaction for infringement is statutory remedy conferred on theregistered proprietor of registered trade mark for the vindicationof the exclusive right to the use of the trade mark in relation tothose goods” (Vide Section 21 of the Act). The use by thedefendant of the trade mark of the plaintiff is not essential in anaction for passing off, but is the sine qua non in the case of anaction for infringement. No doubt, where the evidence in respectof passing off consists merely of the colourable use of registeredtrade mark, the essential features of both the actions might coincidein the sense that what would be colourable imitation of trademark in passing off action would also be such in an action forinfringement of the same trade mark. But there thecorrespondence between the two ceases. In an action forinfringement, the plaintiff must, no doubt, make out that the use ofthe defendant’s mark is likely to deceive, but where the similaritybetween the plaintiff’s and the defendant’s mark is so close eithervisually, phonetically or otherwise and the court reaches theconclusion that there is an imitation, no further evidence is required

to establish that the plaintiff’s rights are violated. Expressed inanother way, if the essential features of the trade mark of theplaintiff have been adopted by the defendant, the fact that theget-up, packing and other writing or marks on the goods or on thepackets in which he offers his goods for sale show markeddifferences, or indicate clearly trade origin different from thatof the registered proprietor of the mark would be immaterial;whereas in the case of passing off, the defendant may escapeliability if he can show that the added matter is sufficient todistinguish his goods from those of the plaintiff.”45. It could thus be seen that this Court has pointed out thedistinction between the causes of action and right to relief in suits forpassing off and for infringement of registered trade mark. It has beenheld that the essentials of passing off action with those in respect of anaction complaining of an infringement of registered trade mark, cannotbe equated. It has been held that though an action for passing off is aCommon Law remedy being an action for deceit, that is, passing offby person of his own goods as those of another; the action forinfringement is statutory right conferred on the registered proprietor ofa registered trade mark for the vindication of the exclusive rights to theuse of the trade mark in relation to those goods. The use by the defendantof the trade mark of the plaintiff is sine qua non in the case of anaction for infringement. It has further been held that if the essentialfeatures of the trade mark of the plaintiff have been adopted by thedefendant, the fact that the get-up, packing and other writing or markson the goods or on the packets in which he offers his goods for saleshow marked differences, or indicate clearly trade origin differentfrom that of the registered proprietor of the mark, would be immaterialin case of infringement of the trade mark, whereas in the case of apassing off, the defendant may escape liability if he can show that theadded matter is sufficient to distinguish his goods from those of theplaintiff.

46. Again, while considering the provisions of Section 21 of the1940 Act, this Court in the case of Ruston & Hornsby Limited (supra),observed thus:

“4. It very often happens that although the defendant is not usingthe trade mark of the plaintiff, the get up of the defendant’s goodsmay be so much like the plaintiff’s that clear case of passing off

would be proved. It is on the contrary conceivable that althoughthe defendant may be using the plaintiff’s mark the get up of thedefendant’s goods may be so different from the get up of theplaintiff’s goods and the prices also may by so different that therewould be no probability of deception of the public. Nevertheless,in an action on the trade mark, that is to say, in an infringementaction, an injunction would issue as soon as it is proved that thedefendant is improperly using the plaintiff’s mark.

5. The action for infringement is statutory right. It is dependentupon the validity of the registration and subject to other restrictionslaid down in Sections 30, 34 and 35 of the Act. On the other handthe gist of passing off action is that is not entitled to representhis goods as the goods of but it is not necessary for to provethat did this knowingly or with any intent to deceive. It is enoughthat the get-up of B’s goods has become distinctive of them andthat there is probability of confusion between them and the goodsof A. No case of actual deception nor any actual damage need be

proved. At common law the action was not maintainable unlessthere had been fraud on A’s part. In equity, however, LordCottenham, L.C., in Millington v. Fox [3 My & Cr 338] held thatit was immaterial whether the defendant had been fraudulent ornot in using the plaintiff’s trade mark and granted an injunctionaccordingly. The common law courts, however, adhered to theirview that fraud was necessary until the Judicature Acts, by fusinglaw and equity, gave the equitable rule the victory over the commonlaw rule.

6. The two actions, however, are closely similar in some respects.As was observed by the Master of the Rolls in Saville PerfumeryLtd. v. June Perfect Ltd. [58 RPC 147 at 161] :

“The statute law relating to infringement of trade marks isbased on the same fundamental idea as the law relating topassing-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 trade mark, and (2) the statutoryprotection is absolute in the sense that once mark is shownto offend, the user of it cannot escape by showing that bysomething outside the actual mark itself he has distinguishedhis goods from those of the registered proprietor.

Accordingly, in considering the question of infringement theCourts have held, and it is now expressly provided by theTrade Marks Act, 1938, Section 4, that infringement takesplace not merely by exact imitation but by the use of amark so nearly resembling the registered mark as to belikely to deceive.””

47. It could thus be seen that this Court again reiterated that thequestion to be asked in an infringement action is as to whether thedefendant is using mark which is same as, or which is colourableimitation of the plaintiff’s registered trade mark. It has further been heldthat though the get up of the defendant’s goods may be so different fromthe plaintiff’s goods and the prices may also be so different that therewould be no probability of deception of the public, nevertheless even insuch cases, i.e., in an infringement action, an injunction would be issuedas soon as it is proved that the defendant is improperly using the plaintiff’smark. It has been reiterated that no case of actual deception nor anyactual damage needs to be proved in such cases. This Court has furtherheld that though two actions are closely similar in some respects, in anaction for infringement, where the defendant’s trade mark is identicalwith the plaintiff’s trade mark, the Court will not enquire whether theinfringement is such as is likely to deceive or cause confusion.

48. In the present case, both the trial court and the High Courthave come to the conclusion that the trade mark of the respondents-defendants is identical with that of the appellant-plaintiff and further thatthe services rendered by the respondents-defendants are under the sameclass, i.e., Class 16 and Class 42, in respect of which the appellant-plaintiff’s trade mark “RENAISSANCE” was registered. In suchcircumstances, the trial court had rightly held that the goods of theappellant-plaintiff would be covered by Section 29(2)(c) read with Section29(3) of the said Act.

49. However, the High Court, while reversing the decree ofinjunction granted by the trial court, has held that the appellant-plaintiffhad failed to establish that the trade mark has reputation in India andthat the respondents-defendants’ use thereof was honest and furtherthat there was no confusion likely to be created in the minds of theconsumers inasmuch as the class of consumers was totally different. Itappears 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 conclusion.

A50. We find that the High Court has totally erred in taking intoconsideration only clause (c) of sub-section (4) of Section 29 of the saidAct. 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 saidAct, 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 legislativeBintent is very clear. Insofar as sub-section (2) of Section 29 of the saidAct is concerned, it is sufficient that any of the conditions as provided inclauses (a), (b) or (c) is satisfied.51. It is further clear that in case of an eventuality covered underclause (c) of sub-section (2) of Section 29 in view of the provisions ofCsub-section (3) of Section 29 of the said Act, the Court shall presumethat 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 Actwould reveal that the same deals with an eventuality when the impugnedtrade mark is identical with or similar to the registered trade mark and isDused in relation to goods or services which are not similar to those forwhich the trade mark is registered. Only in such an eventuality, it will benecessary to establish that the registered trade mark has reputation inIndia and the use of the mark without due cause takes unfair advantageof or is detrimental to, the distinctive character or repute of the registeredEtrade 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 theproprietor of the registered trade mark to sue for infringement whenthough the impugned trade mark is identical with the registered trademark, but is used in relation to goods or services which are not similar toFthose for which the trade mark is registered. To sum up, while sub-section (2) of Section 29 of the said Act deals with those situationswhere the trade mark is identical or similar and the goods covered bysuch trade mark are identical or similar, sub-section (4) of Section 29of the said Act deals with situations where though the trade mark isGidentical, but the goods or services are not similar to those for which thetrade mark is registered.

53. Undisputedly, the appellant-plaintiff’s trade mark“RENAISSANCE” is registered in relation to goods and services inClass 16 and Class 42 and the mark “SAI RENAISSANCE”, which isHidentical or similar to that of the appellant-plaintiff’s trade mark, was

being used by the respondents-defendants in relation to the goods andservices similar to that of the appellant-plaintiff’s.

54. In these circumstances, we are of the considered view that itwas not open for the High Court to have entered into the discussion asto whether the appellant-plaintiff’s trade mark had reputation in Indiaand the use of the mark without due cause takes unfair advantage of oris detrimental to, the distinctive character or repute of the registeredtrade mark. We find that the High Court has erred in entering into thediscussion as to whether the respondents-defendants and the appellant-plaintiff cater to different classes of customers and as to whether therewas likely to be confusion in the minds of consumers with regard to thehotel of the respondents-defendants belonging to the same group as ofthe appellant-plaintiff’s. As held by this Court in the case of Ruston &Hornsby Limited (supra), in an action for infringement, once it is foundthat the defendant’s trade mark was identical with the plaintiff’s registeredtrade mark, the Court could not have gone into an enquiry whether theinfringement is such as is likely to deceive or cause confusion. In aninfringement action, an injunction would be issued as soon as it is provedthat 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, whichdeals with hotels and hotel related services and goods. It is also not indispute that the mark and the business name “SAI RENAISSANCE”,which was being used by the respondents-defendants, was also in relationto Class 16 and Class 42. As such, the use of the word “RENAISSANCE”by the respondents-defendants as part of their trade name or businessconcern, would squarely be hit by sub-section (5) of Section 29 of thesaid 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 thesaid Act provides that where the distinctive elements of registeredtrade mark consist of or include words, the trade mark may be infringedby the spoken use of those words as well as by their visual representation.As such, the use of the word “SAI RENAISSANCE” which isphonetically and visually similar to “RENAISSANCE”, would also bean act of infringement in view of the provisions of sub-section (9) ofSection 29 of the said Act.

A57. It is pertinent to note that, the High Court has relied on Section30(1)(b) of the said Act in paragraph (18) of the impugned judgment. Itwill 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 theuse of registered trade mark by any person for the purposesof identifying goods or services as those of the proprietorprovided the use-

(a)xxxxxxxxxxx

(b)is not such as to take unfair advantage of or bedetrimental to the distinctive character or repute ofthe trade mark.””

D58. The glaring mistake that has been committed by the HighCourt is the failure to notice the following part of Section 30(1) of thesaid Act:

“(a) is in accordance with honest practices in industrial orcommercial matters, and”

E59. The perusal of Section 30(1) of the said Act would reveal thatfor availing the benefit of Section 30 of the said Act, it is required thatthe twin conditions, i.e., the use of the impugned trade mark being inaccordance with the honest practices in industrial or commercial matters,and that such use is not such as to take unfair advantage of or bedetrimental to the distinctive character or repute of the trade mark, areFrequired to be fulfilled. It is again to be noted that in sub-section (1) ofSection 30 of the said Act, after clause (a), the word used is ‘and’, likethe one used in sub-section (4) of Section 29 of the said Act, incontradistinction to the word ‘or’ used in sub-section (2) of Section 29of the said Act. The High Court has referred only to the conditionGstipulated in clause (b) of sub-section (1) of Section 30 of the said Actignoring the fact that, to get the benefit of sub-section (1) of Section 30of the said Act, both the conditions had to be fulfilled. Unless it isestablished that such use is in accordance with the honest practices inindustrial or commercial matters, and is not to take unfair advantage oris not detrimental to the distinctive character or repute of the trade mark,H

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 considerationtwo important principles of interpretation. The first one being of textualand contextual interpretation. It will be apposite to refer to the guidingprinciples, succinctly summed up by Chinnappa Reddy, J., in the judgmentof this Court in the case of Reserve Bank of India v. Peerless GeneralFinance and Investment Co. Ltd. and Others[10]:

“33. Interpretation must depend on the text and the context. Theyare the bases of interpretation. One may well say if the text is thetexture, context is what gives the colour. Neither can be ignored.Both are important. That interpretation is best which makes thetextual interpretation match the contextual. statute is bestinterpreted when we know why it was enacted. With thisknowledge, the statute must be read, first as whole and thensection by section, clause by clause, phrase by phrase and wordby word. If 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 takecolour and appear different than when the statute is looked atwithout the glasses provided by the context. With these glasseswe must look at the Act as whole and discover what eachsection, each clause, each phrase and each word is meant anddesigned to say as to fit into the scheme of the entire Act. No partof statute and no word of statute can be construed in isolation.Statutes have to be construed so that every word has place andeverything is in its place. It is by looking at the definition as awhole in the setting of the entire Act and by reference to whatpreceded the enactment and the reasonsfor it that the Courtconstrued the expression “Prize Chit” in Srinivasa [(1980) 4 SCC507 : (1981) 1 SCR 801 : 51 Com Cas 464] and we find no reasonto depart from the Court’s construction.”

61. It is thus trite law that while interpreting the provisions of astatute, it is necessary that the textual interpretation should be matchedwith the contextual one. The Act must be looked at as whole and itmust be discovered what each section, each clause, each phrase and

Aeach word is meant and designed to say as to fit into the scheme of theentire Act. No part of statute and no word of statute can be construedin isolation. Statutes have to be construed so that every word has aplace and everything is in its place. As already discussed hereinabove,the said Act has been enacted by the legislature taking into considerationthe increased globalization of trade and industry, the need to encourageBinvestment flows and transfer of technology, and the need forsimplification and harmonization of trade mark management systems.One of the purposes for which the said Act has been enacted is prohibitingthe use of someone else’s trade mark as part of the corporate name orthe name of business concern. If the entire scheme of the Act is construedCas whole, it provides for the rights conferred by registration and theright to sue for infringement of the registered trade mark by its proprietor.The legislative scheme as enacted under the said statute elaboratelyprovides for the eventualities in which proprietor of the registeredtrade mark can bring an action for infringement of the trade mark and

the limits on effect of the registered trade mark. By picking up part ofDthe provisions in sub-section (4) of Section 29 of the said Act and partof the provision in sub-section (1) of Section 30 of the said Act andgiving it textual meaning without considering the context in which thesaid 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.E62. Another principle that the High Court has failed to notice is thata part of section cannot be read in isolation. This Court, speaking throughA.P. Sen, J., in the case of Balasinor Nagrik Cooperative Bank Ltd. v.Babubhai Shankerlal Pandya and Others[11], observed thus:“4. …..It is an elementary rule that construction of section is toFbe made of all parts together. It is not permissible to omit any partof it. For, the principle that the statute must be read as whole isequally applicable to different parts of the same section…..”

This principle was reiterated by this Court in the case ofKalawatibai v. Soiryabai and Others[12]:G

“6. ….. It is well settled that section has to be read in its entiretyas one composite unit without bifurcating it or ignoring any part ofit…..”

11 (1987) 1 SCC 606H12 (1991) 3 SCC 410

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 withouteven noticing the other provisions contained in the said sub-section (4)of Section 29 of the said Act. Similarly, again while considering the importof sub-section (1) of Section 30 of the said Act, the High Court has onlypicked 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 onthe judgment of this Court in the case of Midas Hygiene Industries(P) Limited (supra). The High Court has relied on the followingobservations of this Court in the aforementioned case:

“5. The law on the subject is well settled. In cases of infringementeither of trade mark or of copyright, normally an injunction mustfollow. Mere delay in bringing action is not sufficient to defeatgrant of injunction in such cases. The grant of injunction alsobecomes necessary if it prima facie appears that the adoptionof the mark was itself dishonest.

[emphasis supplied by me]”

65. The emphasis has been placed by the High Court on theobservations of this Court in the case of Midas Hygiene Industries (P)Limited (supra) to the effect that the grant of injunction also becomesnecessary if it prima facie appears that the adoption of the mark wasitself dishonest. The High Court has relied upon the said observations toreverse the order of injunction on the ground that there is no dishonestyin the respondents-defendants’ adoption of the mark and therefore, theycannot be said to have infringed the trade mark. In our considered view,the aforesaid observations are made out of context. In the said case, thesuit was filed for passing off or for infringement of the copyright. In thesaid case, the Single Judge of the High Court had granted injunction infavour of the plaintiff from manufacturing, marketing, distributing or sellinginsecticides, pesticides as well as insect repellent under the name‘LAXMAN REKHA’. The Division Bench had vacated the injunctionon the ground that there was delay and laches. This Court found that atleast from 1991, the plaintiff was using the mark ‘LAXMAN REKHA’and the plaintiff was having copyright in the marks ‘KRAZY LINES’and ‘LAXMAN REKHA’ with effect from 19[th] November 1991. It wasalso found that the respondent worked with the plaintiff prior to launching

Ahis business. In the said case, this Court observed that the grant ofinjunction becomes necessary if it prima facie appears that the adoptionof the mark was itself dishonest. However, the said judgment cannot beused as ratio for the proposition that, if the plaintiff fails to prove that thedefendant’s use was dishonest, an injunction cannot be granted. On thecontrary, the High Court has failed to take into consideration the observationsBmade in the very same paragraph to the effect that in cases of infringement,either of trade mark or copyright, normally an injunction must follow.66. Insofar as the reliance placed by the learned counsel for therespondents-defendants on the judgment of this Court in the case ofKhoday Distilleries Limited (supra) is concerned, the said case aroseCout of an application filed by the applicants on 21[st] April 1986 with regardto rectification of the trade mark.In the said case, the manufacture ofthe product was started by the company in May 1968. The said companyfiled an application for registration of its mark before the competentauthority. The manufacturer was informed that its application wasDaccepted and it was allowed to proceed with the advertisement and thetrade mark was subsequently registered inasmuch as there was onlyone opposition, and as such, the trade mark came to be registered. Theapplicants had not filed any opposition application. They came to knowof the manufacturer’s mark on or about 20[th] September 1974. Theyfiled an application for rectification of the said trade mark on 21[st] AprilE1986. The question of acquiescence was considered in the said casesince it was noticed that though the product was being manufacturedsince 1968 and though the applicants who sought rectification applicationcame to know about the same on or around 20[th] September 1974, therectification application came to be filed only in the year 1986. The presentFcase arises out of an action for infringement of trade mark. As such,ratio in Khoday Distilleries Limited (supra), would not be applicable tothe 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 hadno application in the said case, which reads thus:

G“84. So far as the applicability of the 1999 Act is concerned, havingregard to the provisions of Sections 20(2) and 26(2), we are ofthe 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 KhodayHDistilleries Limited (supra) is misplaced.

68. Insofar as reliance placed on the judgment of this Court in thecase of Nandhini Deluxe (supra)is concerned,in the said case, the marksfor consideration were “Nandhini” and “Nandini”. It will be relevant torefer to the following observations of this Court in the said case:

“30. Applying the aforesaid principles to the instant case, whenwe find that not only visual appearance of the two marks isdifferent, they even relate to different products. Further, the mannerin which they are traded by the appellant and the respondentrespectively, highlighted above, it is difficult to imagine that anaverage man of ordinary intelligence would associate the goodsof the appellant as that of the respondent.”

69. It could thus be seen that in the facts of the said case, not onlythe visual appearance of the two marks were different, but they evenrelated to different products. As such, the said judgment would also beof no assistance to the case of the respondents-defendants in the presentcase.

70. Insofar as the reliance placed on the judgment of this Court inthe case of Neon Laboratories Limited (supra) is concerned, the saidcase arose out of the proceedings for grant of temporary injunction underOrder XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. Thetrial court had granted an injunction in favour of the plaintiff finding thatthe plaintiff had, with prima facie material, established that it was usingtheir trade mark well before the attempted use of an identical or closelysimilar trade mark by the appellant-defendant. The said injunction wasaffirmed by the Single Judge of the High Court. Confirming the concurrentorders, this Court held that the plaintiff would be entitled to temporaryinjunction in light of the “first in the market” test. As such, the saidjudgment would also not be applicable to the facts of the present case.71. We are, therefore, of the considered view that the High Courtfell in error on various counts. The present case stood squarely coveredby the provisions of Section 29(2)(c) read with sub-section (3) of Section29 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 haserred in taking into consideration clause (c) of sub-section (4) of Section29 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. TheHigh Court has failed to take into consideration that in order to avail thebenefit of Section 30 of the said Act, apart from establishing that the use

Aof the impugned trade mark was not such as to take unfair advantage ofor is detrimental to the distinctive character or repute of the trade mark,it is also necessary to establish that such use is in accordance with thehonest practices in industrial or commercial matters. As such, we haveno hesitation to hold that the High Court was not justified in interferingwith the well-reasoned order of the trial court.B

72. Therefore, we are of the considered view that the High Courtfell in error by interfering with the well-reasoned order of the trial courtand so, the present appeal deserves to be allowed.

73. In the result, the appeal is allowed and the impugned judgmentCand order dated 12[th] April 2019 passed by the High Court of Karnatakaat Bengaluru in Regular First Appeal No. 1462 of 2012 is quashed andset aside. The judgement and decree dated 21[st] June 2012 passed by thetrial court in O.S. No. 3 of 2009 is maintained.

74. No order as to cost. Pending application(s), if any, are disposedof in the above terms.D

Divya Pandey

(Assisted by : Deepak Panwar, LCRA)

Appeal allowed.