M/S.Thke Renaissance ... vs M/S.Renaissance Hotels ... on 28 April, 2009
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Kerala High Court
IN THE HIGH COURT OF KERALA AT ERNAKULAM
RFA.No. 235 of 2008()
1. M/S.THKE RENAISSANCE COCHIN,P.B.NO 2310,
... Petitioner
Vs
1. M/S.RENAISSANCE HOTELS INC.MARRIOTR
... Respondent
For Petitioner :SRI.SATHISH NINAN
For Respondent :SRI.JOSEPH KODIANTHARA
The Hon'ble MR. Justice PIUS C.KURIAKOSE
Dated :28/04/2009
O R D E R
PIUS.C.KURIAKOSE J.
------------------------
R.F.A.No.235 of 2008
------------------------
Dated this the 28th day of April , 2009
JUDGMENT
The defendant in a suit for perpetual injunction filed under Sections 135 and
136 of the Trade Marks Act , being aggrieved by the judgment and decree passed
against them, has preferred this appeal. The plaintiff in the suit is the
respondent and the parties are referred to hereinafter as they were before the
trial court.
2. The case of the plaintiff, as averred in the plaint in brief, is that
they are a company incorporated in Delaware, U.S.A. and is one of the world's
largest and leading hoteliers, having their outlets all over the world
including the former "RENAISSANCE" Goa Resort, Goa and the "RENAISSANCE"
Mumbai Hotel and Convention Centre at Mumbai. The plaintiff has been
continuously using the Mark "RENAISSANCE" throughout the world from 1981 and in
India from 1990. The plaintiff operates or franchises more than 130 hotels all
over the world and is using the mark "RENAISSANCE" to represent its
RFA.No.235/2008 2
Hotels. The plaintiff is expending crores of rupees every year for
advertisement and promotion of its business and thereby the mark "RENAISSANCE"
has become famous and associated with the plaintiff's well known "RENAISSANCE"
Hotel brand. The plaintiff also operated the domain name www.renaissancehotels.
com. in connection with providing information about the "RENAISSANCE" hotel
chain and its hotel services. As a result the public associates the mark
"RENAISSANCE" when used in a domain name with the plaintiff's high quality
services. The high quality services rendered by the plaintiff to its customers
has earned a reputation and developed a goodwill associated with the mark
"RENAISSANCE" throughout the world. In India the plaintiff has operated two
Hotels, one at Goa and one at Mumbai. The Goa "RENAISSANCE" hotel was founded
in 1990 and changed its name to RAMADA CARAVALE in 2003. The Mumbai
"RENAISSANCE" hotel has operated continuously since 2001. Both Hotels of the
plaintiff are popularly known as "RENAISSANCE" Hotels. In these two hotels, the
plaintiff has rendered extremely high standards of service and thereby has
earned reputation and goodwill in the hospitality industry. RFA.No.235/2008 3
Though the plaintiff arranged a change of the name of the Goa Renaissance Hotel
in 2003 since it has been continuously and extensively rendering hospitality
services from its hotel in Mumbai since 2001, it can be seen that in India from
1990, the mark "RENAISSANCE" is associated with the hotels operated by the
plaintiff. The plaintiff also applied for registration of the trade name
"RENAISSANCE" in India by an application made in 1993 which was pending with
the Registry at the time of filing the suit. Subsequently the Registry has
granted registration in favour of the plaintiff. The plaintiff also applied for
registration of the trade name "RENAISSANCE" in India by an application made in
1993 which was pending with the Registry at the time of filing the suit.
Subsequently the Registry has granted registration in favour of the plaintiff.
The plaintiff further alleged that they are a member of Marriot Rewards
Program. The Marriot Rewards is the world's largest multi brand frequent guest
programme and offers its members the opportunity to earn/redeem points at nine
distinct holding brands, including the plaintiff's hotels. For the past five
years, the Marriot Reward has been named the " Best Hotel Reward Program in the
world" by Business Traveller's Magazine. RFA.No.235/2008 4
Currently there are 27616/- Marriot Rewards members residing in India.
3. It is further averred that the defendants are operating a hotel in
Cochin under the Trading Name "THE "RENAISSANCE COCHIN". The plaintiff came to
know of this when one of its customers through an e-mail reported that he was
misled to believe that the Defendant Hotel was part of the plaintiff's hotel
chain and had stayed there. The plaintiff issued a notice dated 3/12/2001
calling upon the defendant to desist from using the mark "RENAISSANCE". The
defendant through a reply dated 28/12/2001 issued through its Advocates
expressed its willingness to change the name, but sought permission to use the
expression "formerly the "RENAISSANCE" Cochin for two years. Subsequently in
November 2002 the plaintiff received a letter from another lawyer said to be
representing the defendant informing that the earlier letter was not authorized
by the defendant. The plaintiff therefore, after issuing another notice, filed
suit for prohibitory injunction against passing off and in respect of the
dispute relating to the use of the word "RENAISSANCE". The defendant filed
written statement raising RFA.No.235/2008 5
various contentions. Pleadings have been narrated correctly by the learned
Subordinate Judge and I do not propose to narrate them over again. In essence
the contention of the defendant is that they have renamed its hotel (previously
by name Polakulath Tourist Home) as "RENAISSANCE" Cochin and submitted
application for registration of the trade name "RENAISSANCE" in 1997. According
to the defendant, the plaintiff cannot claim exclusivity for the word
"RENAISSANCE" and since the plaintiff had changed the name of the Goa Hotel
from Renaissance to Ramada it would show that the name had no significance to
the business of the plaintiff. The learned subordinate Judge formulated the
following issues for trial ;
1. Whether the plaintiff has acquired
right to exclusive use of the trade
name/mark "RENAISSANCE" ?
2. Whether the defendant has acquired
right to exclusive use of the trade
name/mark Renaissance Cochin ?
3. Whether the user of the trade
name/mark Renaissance Cochin by the
RFA.No.235/2008 6
Defendant has infringed the right if any acquired by the plaintiff
?
4. Whether the plaintiff has got a
cause of action to sue ?
5. Is the Plaintiff entitled to a decree
of injunction as prayed for ?
6. Reliefs and Costs ?
4. At trial the evidence consisted of the oral testimony of PW1, Director
of Human Resources of the plaintiff Company in India and that of DW-1 Managing
Director of the defendant company. The documentary evidence consisted of
Exts.A1 to A101 and B1 to B12. The documents have been described correctly in
the appendix to the impugned judgment. Even though no specific contention had
been raised in the suit that the suit is not maintainable in law for the reason
that the authorisation issued to the signatory of the plaint was not produced
and only some passing questions were asked to PW1 with respect to this and the
trial court observed that no such contention was raised by the defendant in its
written statement, RFA.No.235/2008 7
the trial court considered the argument and found that the suit is maintainable
and that in any event the non production of the authorization is only a curable
defect. It would appear from the judgment that the court recast the issues as
follows; 1). Whether the suit is maintainable?
2). Is the defendant res trainable as prayed for ?
3. Reliefs and costs.
With respect to the merits of the matter, the Trial court on an assessment of
the evidence on record found that the plaintiff had started the Goa Hotel in
1993 and the Mumbai Hotel in 2001 and the various certificates of registration
and Travel Directories overwhelmingly suggest the presence of the plaintiff in
the hospitality industry all over the world from 1984 onwards and in India
from 1993. The court further held that at the same time the defendant started
its hotel only in 1998 and since the name of the hotel of the defendant is
similar to the name of the plaintiff's hotel it is obvious that the plaintiff
is entitled to maintain the passing off action. The trial court also did not
accept that the initial reply given by a lawyer on behalf of the defendant was
not authorized and held that the said reply RFA.No.235/2008 8
provides a set back to the defendant. The trial court therefore became pleased
to restrain the defendant from passing off its hotel by using the name
"RENAISSANCE" and also from using the domain name www.renaissancecochin.com.
5. Raising grounds A to F in the memorandum of appeal, it is prayed that
the judgment and decree be set aside and the suit be dismissed.
6. I have heard the submissions of Sri.Sathish Ninan learned counsel for
the appellant and also those of Sri. Joseph Markose, learned Senior counsel for
the respondent. Sri.Sathish Ninan would place reliance on a number of judicial
precedents in support of the various propositions argued by him. He argued
that the suit is not maintainable in law. He conceded that the written
statement does not project any contention regarding the maintainability of the
suit due to the reason that the signatory to the plaint is not competent to
represent the plaintiff company or to sign and verify pleadings on behalf of
the plaintiff company. But since the institutional maintainability of the suit
is being disputed, according to him it is open to the defendant to raise the
contention. He submitted that the suit is filed by a company and
RFA.No.235/2008 9
the plaint is said to have been signed by the power of attorney of the company.
The Signatory is not an officer of the company, but a mere power of attorney
holder. The Power of attorney was not produced. After affixing the signature to
the plaint, the signatory is not heard of. But for the power of attorney, the
signatory is incompetent to sign the plaint on behalf of the company since he
is not a Director or an officer of the Company. Therefore, the production of
the power of attorney was mandatory for the institution of the suit. He relied
on the judgment of the Supreme Court in United Bank of India v. Naresh Kumar
and others (AIR 1997 SC 3) in support of the argument that since the signatory
is not an officer of the company, he will become competent to sign the plaint
on behalf of the company only if there is authorization by the Board of
Directors or there is a power of attorney in his favour. Strong objection was
raised by him in respect of the power of attorney which was filed by the
plaintiff before this court along with a petition under Rule 41 of Order 27
CPC. He argued that the power of attorney is not properly stamped. And since
the non production of the power of attorney along with the suit is a
RFA.No.235/2008 10
matter which goes to be very institution of the suit, the suit is to be held as
not maintainable.
7. Coming to the issue as to whether the defendant is liable to be
restrained by a decree of injunction from using its trade mark, Sri.Sathish
Ninan submitted that the trade mark of the plaintiff is just "Renaissance" and
that of the defendant is "The Renaissance Cochin" (also) Crown of an ancient
Soldier. Sri.Satish Ninan submitted that decisions on the subject will show
that in actions for passing off, mainly four issues arise for consideration.
(a) The first issue, according to the learned counsel, is the "Time Factor"
i.e. whose business (whether plaintiff's or defendant's) commenced prior in
point of time. (b) Incidentally can/whether prior sales in small quantities
establish priority. The second issue is "Reputation"; whether the goodwill has
been established in the country. The third issue is "Deception"; actual or
possible. The forth issue is "Damages"' actual or likelihood of. According to
Sri.Satish Ninan, the plaintiff in order to secure a decree of prohibitory
injunction, will have to prove that the plaintiff's business commenced prior in
point of time, that goodwill/reputation has been established by RFA.No.235/2008
11
the plaintiff in the country, that the mark used by the defendant is
deceptively similar to that of the plaintiff and that consequently there has
been actual deception or possibility of deception and finally that consequent
to the use of the mark by the defendant the plaintiff has sustained damages. It
is only if all the above mentioned elements are proved by the plaintiff, the
plaintiff will be entitled to get a decree of injunction. According to him, the
issue of "Time Factor" and "Reputation" can be considered together in the light
of the pleadings raised by the parties and the evidence adduced by them in this
case. He further submitted that in paragraphs 3 and 5, it is stated that the
plaintiff has earned reputation and goodwill in India since 1993. However, it
is not stated as to which was the location in which the plaintiff set up the
Hotel. In paragraph 5 of the plaint the amounts expended for advertisement and
promotion of the business of the plaintiff has been referred. It only relates
to the period from 2001. Coming to the evidence, the plaintiff produced A1 to
A101 documents. Most of them were mere Photostat copies and inadmissible in
evidence. Most of the advertisements produced by the plaintiff are in Foreign
Newspapers and RFA.No.235/2008 12
Magazines. Advertisements produced as having been published in India is only
since 2003. The chief examination of PW1 para 7 refers to the worldwide turn
over of the plaintiff and does not give specifics regarding the turn over in
India. In chief examination of PW1, at para 10, the expenses incurred in India
relates only to the period 2001. Regarding the time factor and reputation,
relevant portion of the evidence of PW1 is up to para 12 of the chief
examination. There is nothing to indicate that prior to the year 2001 anything
was practically done in India by the plaintiff to acquire goodwill and
Reputation. Though the plaintiff would claim that it had a hotel at Goa since
1990 the cross examination of PW1 at pages 16, 18,19 and 25 casts doubts on
the same. Going by the evidence of the defendant as DW1 read with Exts.B2, B3,
B4, B7, B8 and B11 it is in evidence that the defendant had been doing business
and using the mark ever since the year 1996. Sri.Satish Ninan further submitted
that even assuming that the plaintiff had a Hotel at Goa in the year 1990, the
mere small business earlier in point of time is not sufficient to constitute
priority. There has to be sufficient evidence to show that though it was a
prior small scale business RFA.No.235/2008 13
the plaintiff ahd established goodwill and reputation during that period. In
the instant case there is no evidence to show that prior to the year 2001, the
plaintiff had done anything in the country to establish reputation and
goodwill. Therefore, even assuming that the plaintiff commenced its business in
India earlier in point of time by commencing business in Goa, still it will
not help the plaintiff to seek a decree for injunction unless it is shown that
by the prior business the plaintiff had established goodwill and reputation in
India. The learned counsel further pointed out that even according to the
plaintiff and the plaint averment in para 3, the Hotel at Goa was re-branded
under a different mark. That itself goes against the claim of the plaintiff
regarding goodwill and reputation. If the plaintiff had really acquired a
goodwill and reputation in respect of the mark and the business, plaintiff
would not have changed the name of the Hotel to any other name. This very
conduct of the plaintiff cuts at the very root of the plaintiff's case. As
regards the question of "Trans Border Reputation", Sri.Satish Ninan submitted
that in order to earn reputation and goodwill in a country it is not essential
that business must have been actually conducted in that RFA.No.235/2008 14
country. By way of advertisements or other materials also goodwill or
reputation could be established in a country in spite of the fact that actual
business is not being carried on there. This kind of reputation that
transgresses the limits of jurisdiction of the country where actual business is
being done to another country is termed "Trans Border Reputation" In the
instant case the plaintiff could have produced material to show that by
advertisements and publications the plaintiff had acquired a Trans Border
Reputation in India prior to the starting of the business by the Defendant.
However, the newspapers and magazines produced by the plaintiff relating to the
advertisements made in India are all for the period after 2002. Coming to the
aspect of deception, Sri.Satish Ninan submitted that except vague statements
in paragraphs 8, 9 and 10 of the plaint, no specific averments have been made
by the plaintiff. Even the name of the customer who allegedly sent E-mail is
disclosed in the plaint. E-mail message contrary to the averment in the plaint
was not produced along with the plaint. Though Ext.A77 purporting to be E-mail
message is produced, maker of Ext.A77 is not examined. Referring to the
judgment of the Supreme Court in RFA.No.235/2008 15
2001(5) SCC page 73, Sri.Satish Ninan submitted that for proving deception,
relevant factors to be taken into account are ;
a) Nature of Marks
b). Degree of resemblance.
c). Nature of goods.
d). Similarity in the nature, character and purpose of the goods.
e). The class of customers, their education, intelligence, degree of care
and
f). Dissimilarities between the marks.
8. Referring to the evidence of PW1 in cross examination at page 33 and
the evidence of DW1 in chief examination at paras 5, 9 and 10 and cross
examination of pages 13 and 14 Sri.Satish Ninan submitted that when the
relevant aspects are taken into account, it will be seen that there has been no
deception or possibility of deception.
9. Sri.Satish Ninan dealt next with the aspect of damages. He conceded
that in a quai timet action proof of actual damages may not necessary.
According to him, proof of actual damages may apply in cases where an
interlocutory application for injunction is being considered. In a quai timet
action the RFA.No.235/2008 16
apprehension of an injury is sufficient. The proceedings are initiated before
the injury actually results. In this context, the learned counsel referred to
the judgment of the Supreme Court in Kuldip Singh v. Subhash Chander Jain and
others (2004 (4) SCC 50.). The counsel submitted that the defendant commenced
business in the year 1996. The suit is filed only in the year 2005. By no
stretch of imagination,the action can be said to be quai timet action. If any
damages are resulted, the plaintiff could very well have proved the same. There
is no proper plea or evidence regarding damages. In paragraph 12 of the plaint
what is given is only a vague statement regarding damages. In the evidence of
PW1 in chief examination, there is not even a whisper regarding damages. There
is no case that any damages has resulted to the plaintiff consequent to the
action of the defendant. There was no interim injunction and the plaintiff
could have atleast proved the damages if any which resulted from the date of
the suit till the date of the decree. There is no evidence regarding damages.
According to Sri.Satish Ninan in the absence of evidence or even a proper plea
regarding damages, the plaintiff is not entitled for injunction.
RFA.No.235/2008 17
Sri.Satish Ninan's submissions were cemented by various judicial precedents.
Judgment of the Supreme Court in Ramdev Food Products (P) Ltd. v. Arvindbhai
Rambhai Patel And Others (2006(8) SCC 726), Laxmikant V.Patel v. Chetanbhai
Shah And Another (2002) 3 Supreme Court Cases 65., Uniply Industries v.
Unicorn Plywood Pvt. Ltd. And others (2001 (5) Supreme Court Cases 95), Cadila
Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001 (5) Supreme Court Cases
73) Milmet Oftho Industries And Others v. Allergan Ine (2004 (12 Supreme Court
Cases 624) were relied on by him in support of his submissions made with
reference to the time factor. Sri.Satish Ninan cited the judgment of the
Supreme Court in 2001 (5) SCC 95 (supra) and Satyam Infoway Ltd. v. Sifynet
Solutions (P) Ltd. (2004 (6) SCC 145) to expatiate his argument regarding the
establishment of priority. Similarly, learned counsel relied on the judgments
of the Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel And Others
(2006 (8) SCC 726), Heinz Italia And Another v. Dabur India Ltd. (2007 (6) SCC
1), 2002 (3) SCC 65(supra) in support of his argument regarding the goodwill
and reputation. As regards RFA.No.235/2008 18
his arguments in the context of deception factors, Sri.Satish Ninan relied on
the judgments of the Supreme Court in 2001 (5) SCC 73(supra) 2006 (8) SCC
726(supra), 2007 (6) SCC 1 (supra), 2004 (6) SCC 145 (supra). Sri.Satish Ninan
relied on the judgment of the Supreme Court in 2001 (5) SCC 73 (supra), 2004
(12) SCC 624 (supra) to mention that stricter approach is contemplated only in
action in support of medicinal products. Sri.Satish Ninan relied on the
judgments of the Supreme Court in 2006 (8) SCC 726(supra) 2007 (6) SCC 1
(supra) 2004 (6) SCC 145(supra) and 2002 (3) SCC 65(supra) so as to expatiate
the submissions made in the context of damages. Sri.Satish Ninan relied on the
judgment of the 2006 (8) SCC 726 and 2002 (3) SC 65 (supra) to expound the
concept of trade mark. To make out the distinction between infringement of
Trade Mark and passing off he relied on the judgment of the Supreme Court in
2006 (8) SCC 726(supra) and Kaviraj Pandit Durga Dutt Sharma v. Navaratna
Pharmaceutical Laboratories (AIR 1965 SC 980).
10. Sri.Joseph Markose, learned senior counsel for the respondent was able
to meet the submissions of Sri. Satish Ninan RFA.No.235/2008 19
and he, in my opinion, was successful in putting up an excellent defence of the
judgment under the appeal. Answering Mr.Satish Ninan's argument that the suit
is not maintainable due to the reason that signatory to the plaint is not
competent to represent the plaintiff, the learned senior counsel referred to
the judgment of the Supreme Court in Bhagat Singh and Others v. Jaswant Singh
(AIR 1966 SC 1861) and judgment of this court in South India Corporation
Private Ltd. Madras v. State Trading Corporation of India Ltd. Cochin (AIR 1970
Kerala 138). The learned senior counsel submitted that at any rate non
production of power of attorney is only a curable defect and he relied on the
judgment of this court in AIR 1962 Kerala 19. The learned senior counsel would
rely on the judgment of the Supreme Court in United Bank of India v. Naresh
Kumar and Others (AIR 1997 SC 3) also. In support of his submissions regarding
the merits, the learned senior counsel relied on the judgment of the Supreme
Court in Ruston and Hornby Ltd. v. Vamindara Engineering Co. (AIR 1970 SC
1649). Sri.Jopseph Markose would attempt to distinguish the decisions of the
Supreme Court in 2001 (5) SCC 95, 2007 6 SCC 1, 2004 (6) RFA.No.235/2008 20
SCC 145, 2004 (12) SCC 624 and 2002 (3) SCC 65(supra) cited by Sri.Satish Ninan
in the context of time factor/prior user and would explain that there is
pleading and evidence to justify the decree now passed in the light of the law
as explained by those decisions themselves. My attention was drawn by
Sri.Joseph Markose to salient aspects of the pleadings and the evidence in
this regard. Sri.Joseph Markose relied on the judgments of the N.R.Dongre And
Others Whirlpool Corporation and Another (1996 (5) Supreme Court Cases 714),
AIR 2004 (6) SCC 145 (supra) in support of propositions canvased by him.
Sri.Joseph Markose relied on the judgment of the Supreme Court in Ruston and
Hornby Ltd. v. Vamindara Engineering Co. (AIR 1970 Supreme Court 1649) and
submitted that actual deception or damages need not be proved. Sri.Joseph
Markose referred to the judgment of the Supreme Court in Cadila Health Care
Ltd. v. Cadila Pharmaceuticals Ltd. (2001 (5) SCC 73) and argued that the said
decision has no application in the present case. That decision according to him
applies only when the marks in question are deceptively similar and not when
they are the same as in the present case. Sri.Joseph Markose would
RFA.No.235/2008 21
refer to the judgment in Kuldip Singh v. Subhash Chander Jain And Others
(2000(4) SCC 50) and argue that an action for passing off is not one of quick
time action. In action for passing it is not necessary to prove actual damages.
It is sufficient that likelihood of damages is established. The learned counsel
relied on the judgments of the Supreme Court in Satyam Infoway Ltd. v. Sifynet
Solutions (P) Ltd. (AIR 2004 (6) SCC 145) and Laxmikant v. Patel v.
Chetanbhaishah And Another (AIR 2002 (3) SCC 65) in the above contest.
11. I have very anxiously considered the rival submissions addressed at
the Bar in the light of the ratio emerging from the various decisions cited
before me both by Sri.Satish Ninan and Sri.Joseph Markose. It is difficult to
accept the argument of Satish Ninan that the suit should fail for the reason
that the signatory to the plaint is not competent to sign and verify pleadings
on behalf of the plaintiff. On going through the written statement it is seen
that no dispute is raised by the defendant regarding the authority of the
signatory to the plaint to sign and verify pleadings on behalf of the
plaintiff. In the written statement I do not find any denial of the signatory's
authority RFA.No.235/2008 22
to sign and verify the plaint despite the claim of signatory in the
verification of the plaint that he is duly authorised to sign and verify the
plaint. The power of attorney is referred to in the affidavit in support of the
plaint. However, still no contention is raised in the written statement that
the suit is not maintainable. No issue was also framed before the parties went
for trial in the context of maintainability with reference to competence of the
signatory. It is held by this court in AIR 1970 Kerala 138 (supra) that by
virtue of Rule 14 of Order 6 CPC, a person duly authorised can sign the plaint
on behalf of a company. Non denial of the averments in the plaint that the
signatory to the plaint has been duly authorized by the company in my opinion
is of consequence. Importantly in an obvious endorsement of the claim of the
signatory to the plaint that he is duly authorised, the company authorised him
to give evidence and he only gave evidence on behalf of the company as PW1. Non
production of the power of attorney is only a curable defect as held by this
court in Iyakku Mathoo v. Julius Elias Metropolitan (1962 Kerala 19). It is
trite that when interests of substantial justice and those of technicalities
are pitted against each other, the RFA.No.235/2008 23
court shall strive to advance the interests of substantial justice rather than
of technicalities. In fact Supreme Court in United Bank of India v. Naresh
Kumar and Others (AIR 1997 SC 3) held that procedural defects which do not go
to the root of the matter should not be permitted to defeat a just cause. There
is sufficient power in the court under the Code of Civil Procedure to ensure
that injustice is not done to any parties who has a just cause. The original of
the power of attorney is subsequently produced in this court and according to
me the contention on the question of maintainability - that the suit is not
maintainable due to the non competence of the signatory to the plaint cannot
any longer survive.
12. The Supreme Court has described a passing off action in Ruston and
Hornby Ltd. v. Zamindara Engineering Co. (AIR 1970 SC 1649). At para 4, the
Supreme Court has stated that in a passing off action the issue is as follows;
"Is the defendant selling goods so marked as to be designed or calculated to
lead purchasers to believe that they are the plaintiff's goods?
Later in Satyam Infoway Ltd. v. Sifynet Solutions (P) Ltd. (2004 (6) SCC 145)
the Supreme Court has held in paragraph 13 RFA.No.235/2008 24
that an action for passing off, as the phrase " passing off" suggests, is to
restrain the defendant from passing off its goods and services to the public as
that of the plaintiff's. It is an action not only to preserve the reputation of
the plaintiff but also to safeguard the public . As explained by the Supreme
Court in its judgment in 2004 (6) SCC 145 (supra) the three elements of
passing off action are a). Prior user, b) likelihood of deception and c) loss
or likelihood of it. The legal position emerging from the judgments of the
Supreme Court in 2001 (5) SCC 95, 2007 (6) SCC1, 2004 (6) SCC 145, 2004 (12)
SCC 624 and 2002 (3) SCC 65, (supra) which were cited by Sri.Satish Ninan is
that the question as to whose business has started first is one of the most
important factors to be considered in deciding as to whether the plaintiff is
entitled to the injunction in a passing off action. The case of the plaintiff
is that it started using the name RENAISSANCE much prior to the use of the said
name by the defendant. The argument of Sri.Satish Ninan was that there is no
evidence to show the use of the name RENAISSANCE by the plaintiff in India
prior to 2001 and even if the plaintiff had a hotel in Goa by name RENAISSANCE
from 1990 the mere small RFA.No.235/2008 25
business earlier in point of time is not sufficient to claim priority and in
any event the rebranding of the hotel shows that the name RENAISSANCE has no
significance. It is seen from the plaint that it has been clearly averred in
the plaint that the petitioner had operated the Goa RENAISSANC from 1993. In
evidence it is clarified by PW1, that Goa Renaissance was in existence actually
from 1990. At the same time in the written statement the defendant has not
denied that the plaintiff had operated the RENAISSANCE hotel in Goa. On the
contrary the defendant's contention in para 4 and 5 of the written statement
concentrates on the fact that the plaintiff had changed the name of Goa
RENAISSANCE to Ramada and that the admitted change of name by the plaintiff of
its Goa hotel would go to show that the name RENAISSANNCE is not a prominent
and dominant feature of the plaintiff's hotel business. The defendant does not
at any time contest the fact that the plaintiff had been running RENAISSANCE
Goa from 1993. The plaintiff has also produced various advertisements and
travel directories including Exhibits A-23, 24 and A-97, 98 which are travel
directories and Travel agent Brochures for the year 1993, which clearly
advertises existence of RFA.No.235/2008 26
RENAISSANCE Goa in that year. The fact that the name RENAISSANCE is itself
registered in the name of the plaintiff as a trade mark in many countries of
the world is also not disputed. That the plaintiff has been using the name
RENAISSANCE from 1984 is in evidence from various registration certificates
produced. In particular Exhibit A4 issued by the Registry of Trade Marks in
China evidencing registration in China from 1996, A11 in Indoneisa from 1995,
A14 in Russia from 1993, A16 in South Africa from 1984, A17 in Portugal from
1992, A18 in USA, A18(d) in Great Britain, A20 in Mexico from 1993 etc. clearly
show that even prior to 1990 the plaintiff had been using the name RENAISSANCE
worldwide. The defendant has argued that many of the documents (registration
certificates from other countries) are photocopies and so inadmissible. But the
cross examination of PW1 would show that since the defendant has examined PW1
with reference to the documents and the contents of the documents as well and
the statement of PW1 regarding the registration of the mark in various
countries in chief examination are not disputed. The contents of the documents
can therefore be treated as admitted substantially. RFA.No.235/2008 27
Atleast A-4 (China) A16 (South Africa), A18 Great Britan are original
documents. Ext.A1 is the registration granted by the Trade Mark Registry in
India for the name RENAISSANCE. This clearly establishes usage of the name
RENAISSANCE by the plaintiff from 28/10/1993 with respect to class 16.
Pertinently in 1993 it was not possible in India to register Service Marks and
therefore hotels registered their marks in class 16 for printed matter,
magazines, publications, etc. Even the defendant has tried to register its mark
under Class 16. After registration of Service Marks was permitted from
1/10/2003 the Registry has also granted registration of RENAISSANCE under Class
42 to the plaintiff as can be seen from the subsequent registration also
marked A1. The existence of Goa RENAISSANCE hotel in India 1990 and the
continued usage of the word RENAISSANCE by the establishments of the plaintiff
- Renaissance Bombay Hotel in 2001 will show that RENAISSANCE has been a
presence in India continuously from 1990. The defendant on the other hand has
started using the name, RENAISSANCE in Cochin only from 1996/1998. It is
important to note that prior to using of this name the defendant's hotel was
known as " Polakulath Tourist RFA.No.235/2008 28
Home". It is also on record that the Defendant sought to change the name after
certain incidents that occurred in the defendant's hotel. There is force in the
argument of Sri.Joseph Marakose that the defendant should have been aware of
the existence of Renaissance Goa Hotel during the relevant time. Therefore, in
my opinion, usage of the word RENAISSANCE in India by the plaintiff prior to
the usage of the same by the defendant is clearly established in this case. The
argument raised by Sri.Satish Ninan is that cross examination of PW1 casts
doubt in the existence of the Goa RENAISSANCE since 1990. I do not find much
force in this argument. While there are questions pertaining to the ownership
of the hotel, PW1 at page 16 confirms the averment in the Plaint that the
plaintiff operated the RENAISSANCE Goa Hotel. Importantly, the defendant never
had a case that the plaintiff did not operate the Goa RENAISSANCE in 1993
which is confirmed by the answer given to a specific question put to PW1 in
page 14. The question is ; I say as per A23 the name of your hotel is Goa
Renaissance Resort in the year 1993 in India.
A. Yes.
13. The alternate argument that even if the plaintiff had a
RFA.No.235/2008 29
hotel at Goa the small business is not sufficient to constitute priority and
that the plaintiff has in any event rebranded the hotel under a different mark
and so is not entitled to the injunction also cannot succeed. In support of
this, judgments of the Supreme Court in Uniply Industries v. Unicorn plywood
Pvt.Ltd. And others (2001 (5) SCC 95) and Satyam Infoway Ltd. v. Sifynet
Solutions (P) Ltd. 2004 (6) SCC 145 were relied on by Sri.Satish Ninan. Careful
reading of those decisions will show that the Supreme Court has observed that
even prior small sales is sufficient to establish priority. This contention,
according to me, will be relevant only when there is a genuine dispute as to
who started the business first. In the instant case the plaintiff's hotel was
operational from 1990 well before the defendant's hotel in 1998. The admitted
position even according to the defendant is that the plaintiff was operating a
class hotel in Goa under the name "Renaissance" which obviously is not a small
operation. Further, the defendant started using the name "Renaissance" by
changing the name of his hotel whose original name was Polakulath Tourist Home
in Kochi only in 1998. I find merit in the submission of Mr. Joseph Markose
that it is RFA.No.235/2008 30
Polakulath Tourist Home in Kochi which was relatively smaller business than
Renaissance, Goa. Moreover, it is settled law that user of the name worldwide
is relevant and it is not correct to consider user of a name in a country alone
as the criteria. The courts in India have accepted trans-boarder reputation
also as an important factor. The decision of the Supreme Court in Whirlpool's
case reported in 1996(5) SCC 714 confirms this. Further in M/s. Satyam Infoway
Ltd. v. M/s. Sifynet Solutions Pvt. Ltd. - AIR 2004 SC 3540 the Supreme Court
has again confirmed this. In the instant case, the fact that the name
"Renaissance" is itself registered in the name of the plaintiff as a trade mark
in many countries of the world is not disputed and that the plaintiff has been
using the word "Renaissance" from 1984 is evident from the various registration
certificates produced. So there is no scope for dispute that the mark
"Renaissance" is associated with the plaintiff worldwide for long.
14. The case of the defendant/appellant is that people in India are not
aware of the trans-boarder reputation of the plaintiff and the re-branding of
the Renaissance Goa Hotel shows that the name has not much significance.
Importantly RFA.No.235/2008 31
trans-boarder reputation is relevant both for people in India and in the case
of hospitality industry also for foreign tourists who travel to India when
foreign travellers who are familiar with Renaissance hotels of the plaintiff,
arrive in India and come across the Renaisance hotel, they naturally presume it
as one belonging to the Plaintiff's group of hotels. If other persons are
allowed to use the name "Renaissance" for a hotel in India, the possibility of
confusion in the minds of travelling public cannot be ruled out. That the
plaintiff has spent huge amounts for advertisement is not seriously in dispute
and the details are given in the plaint. The existence of Goa Renaissance Hotel
in India from 1990 and the continued usage of the word "Renaissance" by the
establishments of Renaissance Bombay Hotel in 2001 will clearly show that the
Renaissance has been a presence in India continuously. This itself is
sufficient to sustain the injunction granted and it may not be necessary even
to rely upon trans boarder reputation. But all the same I am in agreement with
Sri Joseph Markose who argues that A23, 24, 97 and 98 publications of the year
1993 establishes trans boarder reputation. The defendant admittedly started
using the name "Renaissance" in RFA.No.235/2008 32
Cochin only from 1998. No evidence is produced by the defendant to show that
advertisements have been made using the name "Renaissance". Before the
defendant's hotel started using the name "Renaissance", it was known as
"Polakulath Tourist Home". The version of the plaintiff that the defendant
must have been aware of the existence of Renaissance Goa Hotel during the
relevant time is a probable one. The defendant's witness has only sought to
feign ignorance regarding the existence of Renaissance Goa Hotel. The plaintiff
has produced various advertisement material and publications, published both
in India and abroad. It is not disputed that the plaintiff has many hotels
worldwide and in connection therewith various advertisements, travel brochures
and directories have been published. According to me the finding of the trial
court based on Exts.A57, 59, 61, 62 and 65 to 71 that substantial amounts have
been spent by the plaintiff in advertisements for promoting the reputation in
the hospitality industry is justified. Likewise, the finding based on Exts.A31,
33, 39 to 43 and 72 to 76 that the plaintiff's hotels are part of the Marriott
Rewards Programme catering to the need of the travelling public is correct.
Therefore RFA.No.235/2008 33
I am of the view that the conclusion of the learned Subordinate Judge that the
plaintiff is the prior user of the name "Renaissance" worldwide as well as in
India and that the various pieces of literature, advertisements, directories
etc. overwhelmingly suggests the presence of the plaintiff in the hospitality
industry all over the world from 1984 onwards maintaining very high standards
and acquiring a reputation of their own is a correct and reasonable one.
15. It is now necessary to examine the case in the context of deception
or likelihood of deception. The Supreme Court in Ruston and Hornby Ltd. v.
Zamindara Engineering Co. - AIR 1970 SC 1649 at paragraph 6 drawing the
distinction between a case of infringement of trade mark and one for
restraining passing of held:-
"On the other hand, the gist of a passing off action is that A is not
entitled to represent his goods as the goods of B, but it is not necessary for
B to prove that A did this knowingly or with any intent to deceive. It is
enough that the get-up of B's goods has become distinctive of them and that
there is a probability of confusion between them that and the goods of A. No
case of actual deception nor any actual RFA.No.235/2008 34
damage need be proved."
The plaintiff's case is that use of the name "Renaissance" by the defendant
will deceive the travelling public to presume that defendant's hotel is a part
of the plaintiff's chain of hotels. Ext.A77 is an e.mail message from one
person complaining that he was misled to believe that the defendant's hotel was
part of the plaintiff's chain of hotels. A77 is clearly pointed out in Ext.A78
notices to the defendant. The defendant's case is that the use of the prefix
"the" and suffix "Cochin" to the name "Renaissance" and the logo of a soldier
with a helmet will distinguish the mark of the defendant and therefore there
will not be any confusion for the public. It was argued by the defendant on
the authority of the judgment of the Supreme Court in Cadila's case (AIR 2001
SC 1952) that the relevant factors to be considered are:-(a) nature of marks,
(b) degree of resembleness, ) nature of goods,(d) similarity innature,
character and purpose, (e) class of customers, and (f) dissimilarities between
the marks. But, here in this case, the trade mark is the word "Renaissance"
itself.
The argument of Mr. Joseph Markose that the judgment in Cadila RFA.No.235/2008
35
Health Care Ltd. v. Cadila Pharmaceuticals Ltd. - 2001 (5) SCC 73 is applicable
only when the marks in question are deceptively similar and not when they are
the same, is fairly strong and is supported by the judgment of the Supreme
Court in Uniply Industries Ltd. v. Unicorn Plywood Pvt. Ltd. - AIR 2001 SC
2083. At paragraph 6 of the above judgment it has been held by the Supreme
Court as follows:-
"Considering the nature of the pleadings in the two suits filed by the
parties, it is clear that there is common field of activity between the parties
in respect of goods and trade marks sought to be used by either are identical.
Hence the decision in Cadila case (2001 AIR SCW 1411) and of similar context
may not be of much use in this case. In as much as the areas of activity and
the nature of goods dealt with or business carried on being identical, and the
trade marks being of similar nature, the only question that needs to be
decided is as to who is the prior user."
Admittedly, both the plaintiff and the defendant are in the field of
hospitality and the mark is also the same viz. "Renaissance".
16. The argument of Mr. Satheesh Ninan, though supported RFA.No.235/2008
36
by the judgment of the Supreme Court in Kaviraj Pandit Durga Dutt Sharma v.
Navaratna Pharmaceutial Laboratories - AIR 1965 SC 980 that the defendant in
this case can escape the liability since the added matters viz. the prefix
"the" and the suffix "Cochin" are sufficient to distinguish the defendant's
business from that of the plaintiff cannot be accepted. According to me the
added material viz. the prefix "the" and the suffix "Cochin" are not sufficient
to distinguish the hotels because the public does not associate the hotel with
"the" or "Cochin". The public will always go by the name "Renaissance". The
argument of Mr. Joseph Markose in this case has support of the judgment of the
Supreme Court in Laxmikant V. Patel v. Chetanbhai Shah and another - 2002(3)SCC
65. That was a case where a passing on action in respect of the name
"Muktajivan" was defended contending where "defendant" on the basis of a use of
prefix "QSS". Repelling the argument the Supreme Court held:- "It is the
word "Muktajivan", the employment of which makes distinctive the business name
of the plaintiff and it is the continued use of "Muktajivan" in the business
name RFA.No.235/2008 37
which has created a property therein linked with the plaintiff".
The argument of the respondent is that employment of the word "Renaissance" is
the important and distinctive business name of the plaintiff and the continued
use of the said name from 1990 in India and from 1984 worldwide has created the
property therein linked with the plaintiff, according to me has force. The use
of the same word "Renaissance" by the defendant will cause or is likely to
cause confusion among the public and the use of any prefix "the" or suffix
"Cochin" is immaterial. It is on record that the plaintiff's hotels worldwide
are also normally described with reference to the place where the hotel is
situated as in the case of Renaissance, Mumbai and Renaissance, Goa. The mere
difference in the style of writing is not important. PW.1 has only stated what
is evident that the style of writing "Renaissance" by the two parties is
different. But this cannot give licence to the defendant to use the name
"Renaissance". The logo of a soldier with a helmet is a device mark. There is
no quarrel for the plaintiff that the defendant is free to use this logo, but
the defendant has to use this log with any other name and not with
RFA.No.235/2008 38
the name "Renaissance".
17. The observations of the Supreme Court in Cadila's case certainly
support the argument of Mr. Satheesh Ninan that when medicinal products are
involved, a strict approach has to be taken implying that in other products the
approach may be less strict. This is not a case where two marks which are
deceptively similar to each other are being considered. In the instant case
the mark is the same and the dispute is with regard to use of the same name
"Renaissance" and under such circumstances the only factor to be considered
will be prior user.
18. It is now necessary to consider the arguments of Mr. Satheesh Ninan
raised in the context of damages or likelihood of damages. The argument was
that the plaintiff having filed the suit in 2005 ought to have by now proved
damages and that the action initiated by the plaintiff is to be treated as
similar to a quick time action and the argument was on the basis of the
judgment of the Supreme Court in Kuldip Singh v. Subash Chander Jain and others
- (2000) 4 SCC 50. This argument is also convincingly answered by Mr. Joseph
Markose on the RFA.No.235/2008 39
authority of the judgment of the Supreme Court in Satyam Infoway Ltd. v.
Sifynet Solutions (P) Ltd. - 2004 (6) SCC 145 and Laxmikant V. Patel v.
Chetanbhai Shah and another - 2002(3) SCC 65. Action for passing off according
to the Supreme Court is not one quick time action. In actions for passing off
it is not necessary to prove actual damages and it will be suffice that
likelihood of damages is proved. There is pleading and proof that the plaintiff
is likely to suffer irreparable damages and loss to its reputation and good
will by the continued user of the mark "Renaissance" by the defendant.
19. Another aspect of the matter also cannot be lost sight of. Upon the
plaintiff becoming aware of the use of the name "Renaissance" by the defendant,
plaintiff had issued Ext.A77 notice dated 3.12.2001 to which the defendant
replied by letter dated 28.12.2001 through its advocates agreeing to change its
name to Renaissance, Cochin. This would clearly prove that the defendant was
well aware that the use of the word "Renaissance" was in contravention of law.
Of course, the above admission was subsequently sought to be retracted from by
the defendant who went to the extent of saying of that the first
RFA.No.235/2008 40
lawyer was not authorised to issue such a reply. The trial court was not very
much impressed by the above contention and I also feel that the contention that
the first lawyer had issued the reply unauthorisedly is not convincing in the
absence of any cogent evidence adduced by the defendant.
20. Ext.P1 decision of the National Arbitration Forum constituted in
accordance with the uniform domain name dispute resolution policy adopted by
the Internet Corporation for Assigning Names and Numbers (ICANN) where it is
ordered that the domain name www.renaissancecochin.com shall be transferred
from the defendant to the plaintiff also has some relevance in resolving the
issue. The above order it is seen was passed by the appropriate authority after
enquiry and the same is not seen challenged by the defendant before the
appropriate appellate authority.
21. The above discussion would lead this appeal to the following result:
The appeal stands dismissed. However, in deference to the ability and
learning with which Mr.Satheesh Ninan, learned counsel for the appellant,
addressed his submissions before me, I RFA.No.235/2008 41
direct that costs will not follow the event. The parties will suffer their
costs in this appeal.
PIUS.C.KURIAKOSE,JUDGE
dpk/mt