Interpreting Parts Of Section 29 And 30 In Isolation Is Not Permissible

Under the Trademark Act, 1999, interpretation of Section 29 And 30 In Isolation Is Not Permissible. The test for determining what qualifies as an infringement of a registered trademark is given under (a.) Section 29, which lays down the prerequisites of trademark infringement and (b.) Section 30 which limits the scope of the former provision.

Section 29 and 30 in Isolation

The apex court in the recent case of Renaissance Hotel Holdings Inc. v. B. Vijay Sai and Ors ^[1] added yet another angle to the judicial interpretation of these provisions while settling an infringement dispute of two identical marks that come under the same class. It was observed that interpreting the provisions by themselves is not enough to reach a just and fair judgment in all cases. The factual setup of the case is such that the plaintiff is a well-established hotel brand providing services both nationally and internationally under the trademark “RENAISSANCE”.

The defendants, under the impugned name “SAI RENAISSANCE”, provide similar hotel and hospitality services in Bangalore city and Puttaparthi. In their initial suit at the trial court, the plaintiff pointed out that the defendant had wholly incorporated their well-known trademark of “RENAISSANCE”. The trial court recognised this plea by decreeing the suit in favour of the plaintiffs/ appellant and restraining the respondents/defendants from using the trademark. However, on appeal, the High Court of Kerela soon set aside the decision of the trial court on the following observations: 

• There was a lack of evidence showing that the respondents/defendants were taking unfair advantage of the trademark 
• The plaintiff’s trademark did not have a pan-India reputation as required in clause c of section 29(4) of the Trademark act  
• Despite being identical, the defendant’s trademark is not detrimental to the distinctive character as required under section 30(1)(b) 
• Given that there is considerable difference in the standard of the hotels, the possibility of confusion is negligible  

This decision was yet again followed by an appeal. The Apex Court dismissed all the above observations of the High Court and stated that the interpretation of Sections 29 and 30 in the prior proceedings had been erroneous because the High Court failed to recognise the category in which the current situation would fall. Instead of referring to 29(2)(c), 29(3) and 29(5) (sections that consider adopting identical trademark as infringement, read with the presumption of public confusion) the High Court referred to subsection (4) of Section 29 that deals with goods or services that are not similar to those for which the trademark is registered.

In addition to that, the High Court overlooked the requirement that both of the conditions under Section 30 need to be fulfilled to avoid trademark infringement. This shows that instead of looking at the statute as a whole, the High Court limited itself to the wrongful interpretation of Sections 29(4) and 30(1) by reading the provisions in isolation. Finally, it can be observed that contrary to a case of passing off, adopting identical trademarks and the phonetic and visual similarities between them is enough to directly assume public confusion.  

^[1] CIVIL APPEAL NO. 404  OF 2022 

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