• Makrand

Renaissance Hotel Holdings Inc. (RENAISSANCE) is a US-based multinational company which runs a chain of 160 luxury hotels across the world. RENAISSANCE owns the domain name ‘www.renaissancehotels.com’ and in India is the registered proprietor of the trademark “RENAISSANCE” since 1990.
RENAISSANCE discovered that certain persons were running two hotels in Bangalore and Puttaparthi using the mark, “SAI RENAISSANCE”. RENAISSANCE observed that the infringers had not just incorporated their registered trademark, “RENAISSANCE” as the name of their business concern but also copied their style and signage. The cause of action arose in 2009, when RENAISSANCE came across a website under the domain name ‘www.sairenaissance.com’. RENAISSANCE thereafter conducted an investigation, which confirmed that the use of ‘SAI RENAISSANCE’ was in bad faith and to create an impression that ‘SAI RENAISSANCE’ was affiliated with the RENAISSANCE group.
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RENAISSANCE filed a suit, initially, in the Bangalore Rural District Court (Trial Court) seeking a permanent injunction against the infringers to restrain them from using the impugned mark “SAI RENAISSANCE” and claiming damages for the infringement. RENAISSANCE submitted that, the mark “RENAISSANCE” was a well-known mark and that it had been using it for its hospitality business worldwide since 1981. RENAISSANCE further claimed that it had been using the mark “RENAISSANCE” in India since 1990 and that the infringers had used the mark without any authorisation to ride upon the goodwill RENAISSANCE had earned over the years.
Against this, the infringers countered that the term “RENAISSANCE” was a generic term, and the RENAISSANCE group could not claim monopoly over it. The infringers also claimed that they were oblivious to the existence of RENAISSANCE. “SAI RENAISSANCE” further claimed that they were devotees of Satya Sai Baba, who was considered as the reincarnation of Sai Baba of Shirdi and the term “Renaissance” was used as an expression of this reincarnation.
The Trial Court after considering the submissions of both the parties granted an injunction in favour of RENAISSANCE but denied their claim for damages. The infringers appealed to the Karnataka High Court which swung the legal pendulum in favour of the infringers. The High Court observed that SAI RENAISSANCE was providing low cost boarding and lodging to devotees of Sri Satya Sai Baba and held that RENAISSANCE did not provide any evidence to show trans-border reputation for its mark or to show that the infringers were taking unfair advantage of its trade mark or that the use of the word “SAI RENAISSANCE” was detrimental to RENAISSANCE’S reputation and allowed the appeal.
Aggrieved by the order of the Karnataka High Court, RENAISSANCE appealed to the Supreme Court of India. The issue for consideration before the Supreme Court was ‘whether the decision of the High Court in overturning the decision of the Trial Court, and holding there to be no infringement of the Appellant’s trademark was valid?’ The Supreme Court observed that RENAISSANCE was the registered owner of the trademark. The mark SAI RENAISSANCE was also being used by the infringers for their hotels. The Court held that that the words “RENAISSANCE” and “SAI RENAISSANCE” were phonetically as well as visually similar.
The Supreme Court criticized the Karnataka High Court for absolving SAI RENAISSANCE on the grounds that RENAISSANCE had not established that they have a reputation in India or that SAI RENAISSANCE was taking an unfair advantage of RENAISSANCE or that RENAISSANCE was required to establish that the use of the mark SAI RENAISSANCE was detrimental to the distinctive character or repute of RENAISSANCE.
Therefore, the Supreme Court swung the legal pendulum in the opposite direction in favour of RENAISSANCE and once again injuncted the use of SAI RENAISSANCE.
Author’s Note:
The judgement passed by the Apex Court is important in the field of trademark law in India. It puts at rest several misconceptions with regards to trademark infringement. Once a mark is registered, and the mark is wholly incorporated in another trademark used by another entity, there are no mitigating circumstances and injunction must follow. However, on another note, it appears that the Supreme Court was not made aware of the fact that RENAISSANCE was not registered as a trademark in class 43 for hotel-related services and in reality this ought to have been treated as a case for ‘Passing off’ and not as a case for infringement and Section 29 (4)(c) was squarely applicable.


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