Paragraph numbers below are the court’s original numbering, recovered from the source text.
47. It could thus be seen that this Court again reiterated that the question to be asked in an infringement action is as to whether the defendant is using a mark which is same as, or which is a colourable imitation of the plaintiff’s registered trade mark. It has further been held that though the get up of the defendant’s goods may be so different from the plaintiff’s goods and the prices may also be so different that there would be no probability of deception of the public, nevertheless even in such cases, i.e., in an infringement action, an injunction would be issued as soon as it is proved that the defendant is improperly using the plaintiff’s mark. It has been reiterated that no case of actual deception nor any actual damage needs to be proved in such cases. This Court has further held that though two actions are closely similar in 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 is likely to deceive or cause confusion.
48. In the present case, both the trial court and the High Court have come to the conclusion that the trade mark of the respondents- 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, the trial court had rightly held that the goods of the appellant-plaintiff would be covered by Section 29(2)(c) read with Section 29(3) of the said Act.
49. However, the High Court, while reversing the decree of injunction granted by the trial court, has held that the appellant-plaintiff had failed to establish that the trade mark has reputation in India and that the respondents-defendants’ use thereof was honest and further that there was no confusion likely to be created in the minds of the consumers inasmuch as the class of consumers was totally different. It appears 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 a conclusion. RENAISSANCE HOTEL HOLDINGS INC. v. B. VIJAYA SAI [B. R. GAVAI, J.]
50. We find that the High Court has totally erred in taking into consideration only clause (c) of sub-section (4) of Section 29 of the said Act. 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 said Act, 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 legislative intent is very clear. Insofar as sub-section (2) of Section 29 of the said Act is concerned, it is sufficient that any of the conditions as provided in clauses (a), (b) or (c) is satisfied.
51. It is further clear that in case of an eventuality covered under clause (c) of sub-section (2) of Section 29 in view of the provisions of sub-section (3) of Section 29 of the said Act, the Court shall presume that 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 Act would reveal that the same deals with an eventuality when the impugned trade mark is identical with or similar to the registered trade mark and is used in relation to goods or services which are not similar to those for which the trade mark is registered. Only in such an eventuality, it will be necessary to establish that the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade 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 the proprietor of the registered trade mark to sue for infringement when though the impugned trade mark is identical with the registered trade mark, but is used in relation to goods or services which are not similar to those for which the trade mark is registered. To sum up, while sub- section (2) of Section 29 of the said Act deals with those situations where the trade mark is identical or similar and the goods covered by such a trade mark are identical or similar, sub-section (4) of Section 29 of the said Act deals with situations where though the trade mark is identical, but the goods or services are not similar to those for which the trade mark is registered.
53. Undisputedly, the appellant-plaintiff’s trade mark “RENAISSANCE” is registered in relation to goods and services in Class 16 and Class 42 and the mark “SAI RENAISSANCE”, which is identical or similar to that of the appellant-plaintiff’s trade mark, was being used by the respondents-defendants in relation to the goods and services similar to that of the appellant-plaintiff’s.
54. In these circumstances, we are of the considered view that it was not open for the High Court to have entered into the discussion as to whether the appellant-plaintiff’s trade mark had a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. We find that the High Court has erred in entering into the discussion as to whether the respondents-defendants and the appellant- plaintiff cater to different classes of customers and as to whether there was likely to be confusion in the minds of consumers with regard to the hotel of the respondents-defendants belonging to the same group as of the appellant-plaintiff’s. As held by this Court in the case of Ruston & Hornsby Limited (supra), in an action for infringement, once it is found that the defendant’s trade mark was identical with the plaintiff’s registered trade mark, the Court could not have gone into an enquiry whether the infringement is such as is likely to deceive or cause confusion. In an infringement action, an injunction would be issued as soon as it is proved that 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, 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 the respondents-defendants, was also in relation to Class 16 and Class 42. As such, the use of the word “RENAISSANCE” by the respondents-defendants as a part of their trade name or business concern, would squarely be hit by sub-section (5) of Section 29 of the said 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 the said Act provides that where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation. 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 of sub-section (9) of Section 29 of the said Act. RENAISSANCE HOTEL HOLDINGS INC. v. B. VIJAYA SAI [B. R. GAVAI, J.]
57. It is pertinent to note that, the High Court has relied on Section 30(1)(b) of the said Act in paragraph (18) of the impugned judgment. It will 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 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) xxxxxxxxxxx (b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.””
58. The glaring mistake that has been committed by the High Court is the failure to notice the following part of Section 30(1) of the said Act: “(a) is in accordance with honest practices in industrial or commercial matters, and”
59. The perusal of Section 30(1) of the said Act would reveal that for availing the benefit of Section 30 of the said Act, it is required that the twin conditions, i.e., the use of the impugned trade mark being in accordance with the honest practices in industrial or commercial matters, and that such a use is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark, are required to be fulfilled. It is again to be noted that in sub-section (1) of Section 30 of the said Act, after clause (a), the word used is ‘and’, like the one used in sub-section (4) of Section 29 of the said Act, in contradistinction to the word ‘or’ used in sub-section (2) of Section 29 of the said Act. The High Court has referred only to the condition stipulated in clause (b) of sub-section (1) of Section 30 of the said Act ignoring the fact that, to get the benefit of sub-section (1) of Section 30 of the said Act, both the conditions had to be fulfilled. Unless it is established that such a use is in accordance with the honest practices in industrial or commercial matters, and is not to take unfair advantage or is not detrimental to the distinctive character or repute of the trade mark, 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 consideration two important principles of interpretation. The first one being of textual and contextual interpretation. It will be apposite to refer to the guiding principles, succinctly summed up by Chinnappa Reddy, J., in the judgment of this Court in the case of Reserve Bank of India v. Peerless General Finance and Investment Co. Ltd. and Others10: “33. Interpretation must depend on the text and the context. They are the bases of interpretation. One may well say if the text is the texture, context is what gives the colour. Neither can be ignored. Both are important. That interpretation is best which makes the textual interpretation match the contextual. A statute is best interpreted when we know why it was enacted. With this knowledge, the statute must be read, first as a whole and then section by section, clause by clause, phrase by phrase and word by word. If a 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 take colour and appear different than when the statute is looked at without the glasses provided by the context. With these glasses we must look at the Act as a whole and discover what each section, each clause, each phrase and each word is meant and designed to say as to fit into the scheme of the entire Act. No part of a statute and no word of a statute can be construed in isolation. Statutes have to be construed so that every word has a place and everything is in its place. It is by looking at the definition as a whole in the setting of the entire Act and by reference to what preceded the enactment and the reasonsfor it that the Court construed the expression “Prize Chit” in Srinivasa [(1980) 4 SCC 507 : (1981) 1 SCR 801 : 51 Com Cas 464] and we find no reason to depart from the Court’s construction.”
61. It is thus trite law that while interpreting the provisions of a statute, it is necessary that the textual interpretation should be matched with the contextual one. The Act must be looked at as a whole and it must be discovered what each section, each clause, each phrase and 10 (1987) 1 SCC 424 RENAISSANCE HOTEL HOLDINGS INC. v. B. VIJAYA SAI [B. R. GAVAI, J.] each word is meant and designed to say as to fit into the scheme of the entire Act. No part of a statute and no word of a statute can be construed in isolation. Statutes have to be construed so that every word has a place and everything is in its place. As already discussed hereinabove, the said Act has been enacted by the legislature taking into consideration the increased globalization of trade and industry, the need to encourage investment flows and transfer of technology, and the need for simplification and harmonization of trade mark management systems. One of the purposes for which the said Act has been enacted is prohibiting the use of someone else’s trade mark as a part of the corporate name or the name of business concern. If the entire scheme of the Act is construed as a whole, it provides for the rights conferred by registration and the right to sue for infringement of the registered trade mark by its proprietor. The legislative scheme as enacted under the said statute elaborately provides for the eventualities in which a proprietor of the registered trade mark can bring an action for infringement of the trade mark and the limits on effect of the registered trade mark. By picking up a part of the provisions in sub-section (4) of Section 29 of the said Act and a part of the provision in sub-section (1) of Section 30 of the said Act and giving it a textual meaning without considering the context in which the said 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.
62. Another principle that the High Court has failed to notice is that a part of a section cannot be read in isolation. This Court, speaking through A.P. Sen, J., in the case of Balasinor Nagrik Cooperative Bank Ltd. v. Babubhai Shankerlal Pandya and Others11, observed thus: “4. …..It is an elementary rule that construction of a section is to be made of all parts together. It is not permissible to omit any part of it. For, the principle that the statute must be read as a whole is equally applicable to different parts of the same section…..” This principle was reiterated by this Court in the case of Kalawatibai v. Soiryabai and Others12: “6. ….. It is well settled that a section has to be read in its entirety as one composite unit without bifurcating it or ignoring any part of it…..” 11 (1987) 1 SCC 606 12 (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 without even noticing the other provisions contained in the said sub-section (4) of Section 29 of the said Act. Similarly, again while considering the import of sub-section (1) of Section 30 of the said Act, the High Court has only picked 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 on the judgment of this Court in the case of Midas Hygiene Industries (P) Limited (supra). The High Court has relied on the following observations of this Court in the aforementioned case: “5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, 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]”
65. The emphasis has been placed by the High Court on the observations of this Court in the case of Midas Hygiene Industries (P) Limited (supra) to the effect that the grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest. The High Court has relied upon the said observations to reverse the order of injunction on the ground that there is no dishonesty in the respondents-defendants’ adoption of the mark and therefore, they cannot be said to have infringed the trade mark. In our considered view, the aforesaid observations are made out of context. In the said case, the suit was filed for passing off or for infringement of the copyright. In the said case, the Single Judge of the High Court had granted injunction in favour of the plaintiff from manufacturing, marketing, distributing or selling insecticides, pesticides as well as insect repellent under the name ‘LAXMAN REKHA’. The Division Bench had vacated the injunction on the ground that there was delay and laches. This Court found that at least from 1991, the plaintiff was using the mark ‘LAXMAN REKHA’ and the plaintiff was having a copyright in the marks ‘KRAZY LINES’ and ‘LAXMAN REKHA’ with effect from 19th November 1991. It was also found that the respondent worked with the plaintiff prior to launching RENAISSANCE HOTEL HOLDINGS INC. v. B. VIJAYA SAI [B. R. GAVAI, J.] his business. In the said case, this Court observed that the grant of injunction becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest. However, the said judgment cannot be used as a ratio for the proposition that, if the plaintiff fails to prove that the defendant’s use was dishonest, an injunction cannot be granted. On the contrary, the High Court has failed to take into consideration the observations made in the very same paragraph to the effect that in cases of infringement, either of a trade mark or copyright, normally an injunction must follow.
66. Insofar as the reliance placed by the learned counsel for the respondents-defendants on the judgment of this Court in the case of Khoday Distilleries Limited (supra) is concerned, the said case arose out of an application filed by the applicants on 21st April 1986 with regard to rectification of the trade mark.In the said case, the manufacture of the product was started by the company in May 1968. The said company filed an application for registration of its mark before the competent authority. The manufacturer was informed that its application was accepted and it was allowed to proceed with the advertisement and the trade mark was subsequently registered inasmuch as there was only one opposition, and as such, the trade mark came to be registered. The applicants had not filed any opposition application. They came to know of the manufacturer’s mark on or about 20th September 1974. They filed an application for rectification of the said trade mark on 21st April 1986. The question of acquiescence was considered in the said case since it was noticed that though the product was being manufactured since 1968 and though the applicants who sought rectification application came to know about the same on or around 20th September 1974, the rectification application came to be filed only in the year 1986. The present case arises out of an action for infringement of a trade mark. As such, ratio in Khoday Distilleries Limited (supra), would not be applicable to the 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 had no application in the said case, which reads thus: “84. So far as the applicability of the 1999 Act is concerned, having regard to the provisions of Sections 20(2) and 26(2), we are of the 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 Khoday Distilleries Limited (supra) is misplaced.
68. Insofar as reliance placed on the judgment of this Court in the case of Nandhini Deluxe (supra)is concerned,in the said case, the marks for consideration were “Nandhini” and “Nandini”. It will be relevant to refer to the following observations of this Court in the said case: “30. Applying the aforesaid principles to the instant case, when we find that not only visual appearance of the two marks is different, they even relate to different products. Further, the manner in which they are traded by the appellant and the respondent respectively, highlighted above, it is difficult to imagine that an average man of ordinary intelligence would associate the goods of the appellant as that of the respondent.”
69. It could thus be seen that in the facts of the said case, not only the visual appearance of the two marks were different, but they even related to different products. As such, the said judgment would also be of no assistance to the case of the respondents-defendants in the present case.
70. Insofar as the reliance placed on the judgment of this Court in the case of Neon Laboratories Limited (supra) is concerned, the said case arose out of the proceedings for grant of temporary injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. The trial court had granted an injunction in favour of the plaintiff finding that the plaintiff had, with prima facie material, established that it was using their trade mark well before the attempted use of an identical or closely similar trade mark by the appellant-defendant. The said injunction was affirmed by the Single Judge of the High Court. Confirming the concurrent orders, this Court held that the plaintiff would be entitled to a temporary injunction in light of the “first in the market” test. As such, the said judgment would also not be applicable to the facts of the present case.
71. We are, therefore, of the considered view that the High Court fell in error on various counts. The present case stood squarely covered by the provisions of Section 29(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 in taking into consideration clause (c) of sub-section (4) of Section 29 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. The High Court has failed to take into consideration that in order to avail the benefit of Section 30 of the said Act, apart from establishing that the use RENAISSANCE HOTEL HOLDINGS INC. v. B. VIJAYA SAI [B. R. GAVAI, J.] of the impugned trade mark was not such as to take unfair advantage of or is detrimental to the distinctive character or repute of the trade mark, it is also necessary to establish that such a use is in accordance with the honest practices in industrial or commercial matters. As such, we have no hesitation to hold that the High Court was not justified in interfering with the well-reasoned order of the trial court.
72. Therefore, we are of the considered view that the High Court fell in error by interfering with the well-reasoned order of the trial court and so, the present appeal deserves to be allowed.
73. In the result, the appeal is allowed and the impugned judgment and order dated 12th April 2019 passed by the High Court of Karnataka at Bengaluru in Regular First Appeal No. 1462 of 2012 is quashed and set aside. The judgement and decree dated 21st June 2012 passed by the trial court in O.S. No. 3 of 2009 is maintained.
74. No order as to cost. Pending application(s), if any, are disposed of in the above terms. Divya Pandey Appeal allowed. (Assisted by : Deepak Panwar, LCRA)