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B. Vijaya Sai & Others v/s Renaissance Hotel Holdings Inc

    Regular First Appeal No. 1462 of 2012 (IPR)

    Decided On, 12 April 2019

    At, High Court of Karnataka

    By, THE HONOURABLE MR. JUSTICE SREENIVAS HARISH KUMAR

    For the Appellant: B.C. Seetharama Rao, Advocate. For the Respondent: M. Dhyan Chinnappa, Senior Advocate, Crest Law Partners, Advocates.



Judgment Text

1. This appeal is by the defendants; they have challenged the judgment and decree dated 21.6.2012 in O.S.3/2009 on the file of the Principal District Judge, Bengaluru Rural District, Bengaluru.

2. The respondent in this appeal being the plaintiff in the suit claimed decree of permanent injunction to restrain the defendants from using the trade mark "SAI RENAISSANCE" or any other trade mark identical with plaintiffs trade mark "RENAISSANCE", operating, managing, franchising, directly or indirectly in hotels or restaurants or hospitality services; and to deliver up all the goods, labels or other printed materials bearing impugned marks "SAI RENAISSANCE OR RENAISSANCE" and for damages of Rs.3,50,000/- for having made use of its trade mark.

3. The plaintiff's case in brief is that it is a company incorporated under the laws of the State of Delaware, The United States of America, involved in the business of hotel and hospitality services. It is the registered owner and proprietor of trade mark "RENAISSANCE". It has been in the said service throughout the world since the year 1981 and in India since 1990. In the month of March 2008, the plaintiff came across a website, www.sairenaissance.com through which it discovered the defendant carrying on hotel business at Bengaluru and Puttaparthi under the name "SAI RENAISSANCE" incorporating the plaintiff's well-known trade mark, i.e., RENAISSANCE. Immediately the plaintiff got an investigation conducted and came to know that the defendants were carrying on hotel business with a trade mark resembling the plaintiff's trade mark. The signature, the business cards and the leaflets of the defendants were all got up in a manner so as to suggest an affiliation or association or nexus or connection in some manner with the business of the plaintiff. The defendant was carrying on business at Puttaparthi and near Ashrama of Sri Sathya Saibaba, Whitefield, Bengaluru, to which places number of devotees visit very frequently. The defendants adopted the plaintiff's trade mark with a calculation to misrepresent the customers as though their hotel was connected with or approved by the plaintiff in some manner. The defendants have a website www.sairenaissance.com which incorporates the plaintiff's trade mark and it is an attempt to pass-off the defendants' business and services as and those of plaintiff's trade mark. Thus the plaintiff has suffered and is likely to suffer irreparable loss and damages to its reputation and goodwill. The plaintiff has stated that using its registered trade mark by the defendants amounts to infringement of its right and therefore the defendants are to be restrained from using its trade mark "RENAISSANCE".

4. The defendants refute all the plaint averments. They state that the word "RENAISSANCE" is a generic word and nobody can claim exclusive right in using it. It is contended that the first defendant and his parents are ardent devotees of Sri Shirdi Saibaba and Putaparthi Satya Saibaba. The parents of the first defendant believed that the latter was born to them because of their prayers to Saibaba. They believe that Puttaparthi Saibaba is the reincarnation of Shirdi Saibaba and therefore the defendants used the dictionary word "RENAISSANCE" with the prefix "Sai" for their hotel business. They started a hotel at Puttaparthi on 17.11.1994 and thereafter established a hotel in the year 2001 near Saibaba Ashrama, Whitefield. They have provided hotel facilities to devotees of Saibaba. Normally the devotees come and stay in their hotels. The plaintiff has not established the word "RENAISSANCE" a well-known name trade mark in India. According to the plaintiff the trade mark was registered on 1.10.2003 in India and that the defendants also learnt that there was a rectification proceeding pertaining to the registration of that word. The defendants have also found that there are many business organizations which have made use of the word "RENAISSANCE". They have given a big list of organizations and other business concerns. Thus, the defendants have contended that the word "RENAISSANCE" is not the exclusive property of any user in India. The defendants are using the word "RENAISSANCE" even before the plaintiff got the said word registered and they are entitled to use the same by virtue of section 12 of the Trade Marks Act, 1999 (hereafter for short referred to 'the Act'). The defendants have not infringed any right of the plaintiffs. Therefore, the suit is to be dismissed.

5. The District Judge raised seven issues and two additional issues and considering the oral and documentary evidence adduced by either side, partly decreed the suit restraining the defendants from using the plaintiff's trade mark "RENAISSANCE" and operating, managing or running any business in hospitality services using the word "RENAISSANCE". Hence, the defendants are before this court in this appeal.

6. The learned counsel for the appellants, while arguing, firstly contented that the suit should have been dismissed by the trial court on the count that it was not properly framed. His argument was that the plaintiff is a company, a legal entity. Whenever a corporation institutes a suit or is sued, it must be properly represented by a responsible officer of the company as envisaged under Order 29 of the Code of Civil Procedure. The plaint must be verified by authorized signatory. In the instant case there is no proper verification. One Sri. J.K.Sharma has verified the plaint, but when he signed the plaint, he did not have authorization by the company. A power of attorney showing authorization to Sri. J.K. Sharma was produced at a later stage. This did not cure the initial defect. In spite of all these factors being brought to the notice of the trial court, they have been ignored and held to be insignificant. These findings of the trial court must be set aside.

7. Learned counsel, who appeared for the respondent/plaintiff, argued that the defects that the appellants have pointed out are purely technical and curable. The plaintiff produced a power of attorney as per Ex.P33. Production of this power of attorney cured the defect and this has been discussed by the trial court.

8. On this issue, the trial court has held that the omission and latches pointed out by Sri. B.C.S.(counsel for appellant/defendant) are insufficient to throw away power of attorney as invalid, that when the same point was raised before High Court of Kerala, it was held by it that the court should strive to advance the interests of substantial justice rather than technicalities, that though the resolution of the company empowering the Vice President to execute power of attorney in favour of Sri.J.K.Sharma was not there on record, legal position is that a person could be expressly authorized to sign either by a resolution of the Board of Directors or a power of attorney being executed in favour of an individual and therefore power of attorney, Ex.P33 executed and notarized by the plaintiff confirmed the authority given to Sri.J.K.Sharma to institute the suit. The trial court has also referred to section 15 and section 57 of the Evidence Act in order to presume the genuineness of power of attorney and to reject the objection regarding framing of suit.

9. Given a reflection to the findings of the trial court on this issue, although the suit was not properly framed at the initial stage as required under Order 29 of the Code of Civil Procedure, it was subsequently set right by production of a power of attorney. The defect as has been pointed out by the appellants' counsel is curable; it must be viewed seriously only when plaintiff shows no interest to rectify the defect despite the same being brought to his notice. In the case on hand, the defect was set right. The trial court has assigned cogent reasons which do not require interference.

10. The next question is about alleged infringement of the plaintiffs trade mark "RENAISSANCE" by the defendants.

11. The main findings of the trial court are thus :

11.1. Exs.P1 to P3 indicate that respondent obtained registration of the word "RENAISSANCE" on 28.10.1993 and the same was renewed on 28.10.2003. The word "RENAISSANCE" is not generic and it is distinctive of the plaintiff's (respondent) services and goods. It is to be protected under Trade Marks Law.

11.2. From the documents that the defendants (appellants) have produced, i.e., Exs.D17, D18 and D21, it can be inferred that their 'SAI RENAISSANCE' hotels first came into existence at Puttaparthi on 12.2.1994. If it is the case of defendants that they are using the trade name "SAI RENAISSANCE" since the year 1994, the plaintiff got the registration of the word a decade prior to 1994. When the plaintiff herein instituted a suit alleging infringement of its trade mark by a person who was running a hotel under the name "RENAISSANCE COCHIN", the High Court of Kerala had taken note of existence of plaintiff in India since 1990 with the commencement of a hotel at Goa, and came to conclusion that the plaintiff had gained trans border reputation ever since 1984. Therefore findings recorded by the High Court of Kerala cannot be ignored.

11.3. The defendants are using the mark "RENAISSANCE" with a prefix 'SAI. It is not the case of the defendants that they have obtained registration of this word. The plaintiff and the defendants are engaged in identical business. There is likelihood of customers being confused to believe that the defendants' goods and services originate from the plaintiff or its associates. Though PW1 has stated in the cross-examination that none of its customers had made a complaint that he was confused by the defendants' trade name, likelihood of confusion can be presumed according to Section 29 (3) of the Act.

11.4. With regard to prefixing the word 'SAI', it has been held, by referring to some of the decided cases, that the prefix does not have significant distinctive character. The rooms in the defendants' hotel can be booked online; many foreigners visit the ashrama of Satya Saibaba; they did not get their trade name 'SAI RENAISSANCE' registered under the Act, though they have a website of their own and therefore using plaintiff's trade mark by the defendants as a part of their domain name and operating a website significantly enhances the scope of their infringing activities". The trial court has invoked section 29(2) and (3) of the Act to come to these conclusions.

12. The argument of appellants' (defendants') counsel was that the appellants have not infringed the trade mark right of the respondent. The respondent might have obtained registration of the word "RENAISSANCE" for its business in hotels and hospitality services, but the appellants adopted that name for their business in hotels much before the respondent commenced its business in India. They are the prior users.

12.1. He also argued that there is a reason behind appellants' establishing the hotels using the name "SAI RENAISSANCE". They are the ardent devotees of Sri Satya Saibaba and their belief is that Sri Satya Saibaba of Puttaparti is reincarnation of Sri Shirdi Saibaba. The words such as 'rebirth' or 'reincarnation', are the synonyms of 'RENAISSANCE'. With this intention, the appellants commenced their business firstly at the birth place of Satya Saibaba i.e., Puttaparti and then at Whitefield, where there is a 'Ashrama" of Satya Saibaba. Moreover the appellants have hotels at two places only; majority of the customers of their hotels are devotees of Satya Saibaba, and therefore there is a 'class' difference so far as the customers of the appellants and the respondent are concerned. In these circumstances, there is no infringement. It was argued that the word 'RENAISSANCE' is generic in nature and nobody can claim exclusive right in using it. The trial court has failed to appreciate these aspects. He argued for dismissing the suit by allowing the appeal.

13. The learned senior counsel who argued for respondent emphasized the point that the appellants were not prior users; the respondent started its hotels in India in the year 1990, whereas the appellants started their hotel in the year 1994 at Puttaparti. Therefore the appellant cannot claim to be a prior user. He then argued that the respondent has trans-border reputation; it has hotels at various countries and in India, it has hotels at Goa and Mumbai. The respondent is registered proprietor of the trade mark. Nobody can make use of the trade mark. There are lot of similarities in the logos being used by the appellants and the respondent. He referred to an instance of respondent taking action for infringement of its trade mark when a hotel was commenced at Cochin with the name 'RENAISSANCE COCHIN'. It was held that there was infringement of respondent's proprietary rights over its trade mark. He further argued that 'class difference' in the customers visiting the hotel, is not matter to be considered for deciding the issue relating to infringement. Lastly he stressed another point that though the word 'RENAISSANCE' is a dictionary word, it cannot be called generic because of distinctively that can be seen in making use of that word instead of its style of writing. Therefore he argued for dismissing the appeal.

14. From both sides, a good number of authorities have been referred to. In some of the authorities cited by learned senior counsel for respondent, the broad principles applicable to disputes relating to trade mark are enunciated. With regard to the principle that in cases of infringement of a trade mark, normally an injunction must follow and delay or latches cannot be a ground to deny injunction, the decisions in the cases of Midas Hygiene Industries (P) Limited and Another vs Sudhir Bhatia and Others [(2004) 3 SCC 90]; Brooke Bond India Limited vs Royal Products and Others [1981 (2) KLJ 92]; Kaviraj Pandit Durga Dutt Sharma vs Navaratna Pharmaceutical Laboratories [AIR 1965 SC 980]; Ramdev Food Products (P) Limited vs Arvindbhai Rambhai Patel and Others [(2006) 8 SCC 726] and T.V.Venugopal vs Ushodaya Enterprises Limited and Another [(2011) 4 SCC 85] are referred to.

15. In Ruston & Hornsby Limited vs The Zamindara Engineering Company [(1969) 2 SCC 727] it is held that where the mark is identical, the court will not enquire whether infringement is such as is likely to deceive or cause confusion. On the principle that trans border reputation itself is sufficient to grant injunction, the judgments in the cases of N.R.Dongre and Others vs Whirlpool Corporation and Another [(1996) 5 SCC 714] is referred to. Satyam Infoway vs Sifynet Solutions (P) Limited [(2004) 6 SCC 145] is cited in relation to, principle that domain name is the identifier of the business. Use of prefix or suffix with a registered trade name does not affect the right of a trade mark holder is the principle laid down in the two judgments, namely Laxmikant V Patel vs Chetanbai Shah and Another [(2002) 3 SCC 65] and Living Media India Limited vs Jitender V Jain and Another [(2002) 25 PTC 61]. There is no need to refer to each of these judgments in detail as already said the principles found here are well established, however one judgment of the Supreme Court in Midas Hygiene Industries (supra) will be referred to at a later stage.

16. There is no dispute that the plaintiff is the registered proprietor of this trade mark; it obtained its registration on 28.10.1993 as evidenced by Ex.P2 and Ex.P3. The defendants are running hotels under the name 'SAI RENAISSANCE' at two places - Puttaparthi and Whitefield -Kadugodi in Bengaluru. The plaintiff claims that the defendants have infringed their registered trade mark by adopting it for their hospitality services.

17. If the judgment of the trial court is perused, it is seen that it has arrived at aforesaid conclusion mainly taking into consideration two aspects - firstly that it is a registered owner and secondly that it has its existence in India since the year 1990, a few years before the defendants started their hotels. Section 29 of the Act deals with circumstances as to how and when a trade mark can be said to be infringed; and as mentioned above, the trial court has come to conclusion as to infringement of trade mark by the defendants with reference to section 29 (2) of the Act. But in my opinion, section 29 (4) (c) of the Act is applicable to the set of circumstances of this case. According to clause (c), the reputation of the registered trade mark in India must be established. And it should also be proved that without due cause the user is taking undue advantage of the registered trade mark of the other or his use is detrimental to the distinctive character or reputation of the registered trade mark. In this context, reference to a judgment of Division Bench of Madras High Court in the case of Blue Hill Logistics Private Limited vs Ashok Leyland Limited (2011 SCC Online Madras 671], a judgment cited by appellants' counsel, is useful. It is held : -

"50. One of the essential facts to be established by the Plaintiff under sub-section (4)(c) of Section 29 is about the use of the impugned mark by the 1st Defendant being "without due cause". The purpose of Section 29(4) is to protect the value and goodwill of trade marks, particularly in cases where they are well known from being unfairly taken advantage of or unfairly harmed. Use of the words "without due cause" requires the 1st Defendant to show that not merely the use of infringing mark is in connection with the 1st Defendant's services but "with due cause". It requires the 1st Defendant to establish justifiable reason and to show that use of the mark "LUXURIA" is not "without due cause". In our considered view, adding one "I" to the word "LUXURA" and displaying the same on the bus in the same position as that of the Plaintiff cannot be said to be "with due cause". More so, in the light of the conduct of the 1st Defendant which we have elaborated infra. Even though the words "LUXURA" and "LUXURIA" are derivative word of "LUXURY", 1st Defendant cannot be said to have adopted the mark "LUXURIA" with due cause".

(underlining by me)

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 the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use-

(a) xxxxxxxxx

(b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark".

19. Now if the entire case put forward by the parties is analyzed, it is possible to say though the plaintiff is a prior user of the trade mark "RENAISSANCE" in India - apart from being a registered proprietor, it has failed to establish that it has its own established reputation in India. The plaintiff firstly opened a hotel at Goa, which according to defendants has been closed, and it is running one hotel at Mumbai. According to one answer given by PW1 in the cross-examination, the plaintiff is running a hotel at Mumbai only. The learned counsel for respondent/plaintiff argued about trans border reputation, but the evidence produced by the plaintiff does not disclose that kind of a trans border reputation to uphold its plea in that regard. Merely because the plaintiff has trans border operation it cannot be said that it has trans border reputation as required in the context of section 29 (4) (c) of the Act. Secondly the plaintiff is a 5 star hotel, but the defendants' is not a hotel of that standard.PW1 has admitted in the cross-examination that the defendants are not running 5 star hotel.

20. The defendant has come up with an explanation for adopting the word 'RENAISSANCE". The explanation is that they are the devotees of Satya Saibaba. They believe that Satya Saibaba is the reincarnation of Saibaba of Shirdi. "RENAISSANCE" is close to the meaning of 'REINCARNATION'. With this belief the defendants named their hotels 'SAI RENAISSANCE'. This explanation, in my opinion, satisfies the requirement of "due cause" found in section 29 (4)(c) of the Act.

21. If the case is examined from the angle of section 30 (1) (b) of the Act, no evidence is produced by the plaintiff to prove that the defendants are taking unfair advantage of its trade mark or the user of the word "SAI RENAISSANCE" is detrimental to the distinctive character or repute of plaintiff's trade mark. The learned senior counsel for the respondent/plaintiff referred to the judgment of the High Court of Kerala in the case of M/s THE RENAISSANCE, COCHIN vs M/s RENAISSANCE HOTELS INC. MARRITOR [RFA 235/2008] and argued that the appellant in that case opened a hotel using the respondents' trade mark "RENAISSANCE" and at that time a suit was instituted against "The RENAISSANCE, COCHIN" complaining of infringement by it. The suit was decreed and the defendant therein appealed to the High Court of Kerala. This appeal was also dismissed. It was his argument that the judgment of the Kerala High Court fortifies the case of the plaintiff and therefore the same judgment is applicable to the case on hand. It is difficult to accept this argument because the facts in this case can be distinguished. If the facts culled out in the judgment of the High Court of Kerala are seen, the plaintiff came to know by one of its customers that a hotel was being run under the name and style "THE RENAISSANCE, COCHIN". The said customer sent an e-mail to the plaintiff stating that he was misled to believe that "The RENAISSANCE COCHIN", was part of plaintiffs hotel chains and therefore he stayed there. Thereafter the plaintiff issued a notice to "The RENAISSANCE, COCHIN" calling upon it to desist from using the trade mark 'RENAISSANCE". A reply was sent by the defendant expressing willingness to change the name and permission to use the name for a period of two years. Thereafter, the defendant did not sto

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p using the name and therefore the suit had to be filed by the plaintiff. Same is not the position in this case. It is not the case of the plaintiff that one of its customers was made to believe that the defendant's hotel was a part of the plaintiff's hotel. It has been pleaded by the plaintiff that it came to about the existence of the defendant hotel through internet. PW1 has in fact clearly admitted in the cross-examination that no customer told him that because of the word "RENAISSANCE" used by the defendant, he went there with an impression that the hotel of the defendants was a part of the plaintiff's hotel. He also admits that the defendant serves only vegetarian food without liquor to its customers and that he has no idea that the defendant has established two hotels exclusively for serving the devotees of Satya Saibaba Ashrama both at Puttaparthi and Bengaluru. Therefore, the evidence on record clearly shows that the defendants have not taken unfair advantage, or its existence is detrimental to the distinctive character or reputation of the plaintiff's trade mark. In a circumstance like this, it can very well be said that there is no infringement. 22. The defendants, as aforementioned have given acceptable reason as to why he made use of the word "RENAISSANCE' with the prefix "SAI for naming their hotels. There is no dishonesty in adopting this name. In this context, the judgment of the Supreme Court in Midas Hygiene Industries (P) Limited (supra) is relevant to be referred to. In para 5 it is observed as follows :- "The law on the subject is well settled. In cases of infringement either of trade mark or copy right, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest". (emphasis supplied by me) If the above principle is applied, the defendants cannot be said to have infringed the plaintiff's trade mark. There is no dishonesty in them. In this view, the findings of the trial court cannot be accepted. The appeal should be allowed. Hence, the following order : - (i) Appeal is allowed with costs. (ii) The judgment and decree dated 21.6.2012 in O.S.3/2009 on the file of Principal District and Sessions Judge, Bengaluru Rural District, Bengaluru, is set side. Suit is dismissed.
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