When Defendant's Trademark Is Identical To Plaintiff's Registered Trademark & Their Goods Or Services Are Identical, Confusion In Public Shall Be Presumed : Supreme Court

The Supreme Court observed that, in an action for infringement, when the trade mark of the defendant is identical with the registered trade mark of the plaintiff and that the goods or services of the defendant are identical with the goods or services covered by registered trade mark, the Court shall presume that it is likely to cause confusion on the part of the public.

In an infringement action, an injunction would be issued as soon as it is proved that the defendant is improperly using the trademark of the plaintiff, the bench comprising Justices L. Nageswara Rao, BR Gavai and BV Nagarathna observed.

The appellant­-plaintiff filed a suit claiming a decree of permanent injunction to restrain the ­defendants from using the trade mark "SAI RENAISSANCE" or any other trade mark identical with their trade mark "RENAISSANCE",. The trial court partly decreed the suit by restraining the ­defendants from using the trademark "SAI RENAISSANCE" or any other trade mark which incorporates the ­plaintiff's trade mark "RENAISSANCE" or is deceptively similar thereto. The High Court, allowing defendant's appeal, observed that there was no infringement of trade mark, and set aside the Trial Court judgment. This made the plaintiff approach the Apex Court.

The court, in the judgment, after briefly discussing legislative history/scheme with regard to the trademark laws (Trade Marks Act, 1999) (Para 25- 42) and observed thus:

"42. It could thus be seen that in all legal proceedings relating to trade mark registered under the said Act, the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.

43. The legislative scheme is clear that when the mark of the defendant is identical with the registered trade mark of the plaintiff and the goods or services covered are similar to the ones covered by such registered trade mark, it may be necessary to prove that it is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. Similarly, when the trade mark of the plaintiff is similar to the registered trade mark of the defendant and the goods or services covered by such registered trade mark are identical or similar to the goods or services covered by such registered trade mark, it may again be necessary to establish that it is likely to cause confusion on the part of the public. However, when the trade mark of the defendant is identical with the registered trade mark of the plaintiff and that the goods or services of the defendant are identical with the goods or services covered by registered trade mark, the Court shall presume that it is likely to cause confusion on the part of the public."

Then it refers to Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories [1965] 1 SCR 737, Ruston & Hornsby Limited v. Zamindara Engineering Co. (1969) 2 SCC 727 and noted thus:

"45.It could thus be seen that this Court has pointed out the distinction between the causes of action and right to relief in suits for passing off and for infringement of registered trade mark. It has been held that the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark, cannot be equated. It has been held that though an action for passing off is a Common Law remedy being an action for deceit, that is, a passing off by a person of his own goods as those of another; the action for infringement is a statutory right conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive rights to the use of the trade mark in relation to those goods. The use by the defendant of the trade mark of the plaintiff is a sine qua non in the case of an action for infringement. It has further been held that if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get­up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark, would be immaterial in a case of infringement of the trade mark, whereas in the case of a passing off, the defendant 38 may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff"

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.

The court then noted that both the trial court and the High Court have come to the conclusion that the trade mark of the ­defendants is identical with that of the ­plaintiff and further that the services rendered by the defendants are under the same class, i.e., Class 16 and Class 42, in respect of which the plaintiff's trade mark "RENAISSANCE" was registered.

It further noted that, the High Court, while reversing the decree of injunction granted by the trial court, has held that the plaintiff had failed to establish that the trade mark has reputation in India and that the 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 sub­section (4) of Section 29 of the said Act to arrive at such a conclusion, the court said. The bench made the following discussion in the matter of interpretation of Section 29:

50. We find that the High Court has totally erred in taking into consideration only clause (c) of sub­section (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 sub­section (2) of Section 29 of the said Act, it has used the word 'and' after clauses (a) and (b) in sub­section (4) of Section 29 of the said Act. It could thus be seen that the legislative intent is very clear. Insofar as sub­section (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 sub­section (2) of Section 29 in view of the provisions of sub­section (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 sub­section (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 sub­section (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 sub­section (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, sub­section (4) of Section 29 of the said Act deals with situations where though the trade mark is identical, but 44 the goods or services are not similar to those for which the trade mark is registered.

The court therefore held that it was not open for the High Court to have entered into the discussion as to whether the 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 trademark.

54. 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.

The court also observed that the High Court's interpretation of Section 30 of the Act is erroneous. It said:

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 48 in sub­section (1) of Section 30 of the said Act, after clause (a), the word used is 'and', like the one used in sub­section (4) of Section 29 of the said Act, in contradistinction to the word 'or' used in sub­section (2) of Section 29 of the said Act. The High Court has referred only to the condition stipulated in clause (b) of sub­section (1) of Section 30 of the said Act ignoring the fact that, to get the benefit of sub­section (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

Allowing the appeal, the court observed:

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 sub­section (3) of Section 29 of the said Act. The present case also stood covered under sub­sections (5) and (9) of Section 29 of the said Act. The High Court has erred in taking into consideration clause (c) of sub­section (4) of Section 29 of the said Act in isolation without noticing other parts of the said sub­section (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 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.

Click here to Read/Download Judgment