- The Hon’ble SC has observed, in Renaissance Hotel Holdings Inc. vs. B. Vijaya Sai, that in an action for the infringement of trade mark, when it is shown that the trade mark of the defendant is identical to that of the plaintiff and the goods or services rendered by them are also identical, the Court shall presume that the public would be confused thereby, and an injunction shall be issued.
- The appellant had instituted a suit claiming a decree of permanent injunction to prohibit the defendants from using the trademark “Sai Renaissance” or any other name resembling their trademark Renaissance. The trial Court partly decreed the suit in the appellants favour. The HC however, found that there was no infringement of the trademark laws and allowed the appeal against the order of the trial Court. Aggrieved, the plaintiffs approached the SC.
- The Court observed that the legislative intent is abundantly clear that when the trademarks are identical and the goods and services are ‘similar’ then it might be necessary to establish that the same is likely to cause confusion in the minds of the public. But, if the trademarks are identical and the goods and services offered are also ‘identical’ then the Court shall presume that the same is likely to cause confusion in the minds of the public.
- Comparing the infringement of a trademark to the English concept of passing off, the Court observed that it has been established that if the essential features of the trademark has been adopted by the defendant, but the packaging, getup and other marks on the product sufficiently distinguish the two products and indicate their separate origins, the same in a defence in an action for passover. But, the aforementioned distinction is not a valid defence when there is a breach of a statutory right that has been conferred on the holder of the trademark.
- The Court was also of the opinion that the HC had erroneously given the advantage of section 30 of the Trademarks Act to the defendants. The same could be given if the use is in accordance with the honest practises in industrial or commercial matters.
- Thus, the appeal was allowed and the order of the HC was set aside.
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