Authored By: Mitna Gupta
Institute of Law Nirma University
The Facts of The Case
Renaissance Hotel Holdings Inc., a luxury hotel multinational based in the United States, has owned the “Renaissance” trademark in India since 1994 under Class 42 of the Trademarks Act, 1999. “Renaissance” is associated around the world with luxury hospitality services, and the company has expended value, time, and money establishing a reputation for its brand in several jurisdictions, including India. This trademark is registered and protected by Indian trademark law [i]as it has been continuously renewed.
In this case, the respondent, B. Vijaya Sai, operated a hotel business in Puttaparthi, Andhra Pradesh, using the name “Sai Renaissance Hotel.” As a result, the appellant (Renaissance Hotel Holdings Inc.) filed a civil suit for trademark infringement and passing off in Karnataka before the Trial Court, arguing that the respondent’s use of the term “Renaissance” about hospitality services, infringed the registered mark under Section 29(2) and 29(3) of the Trade Marks Act, 1999.
The appellant made the argument that the use of “Sai Renaissance Hotel” was deceptively similar to their registered mark in respect of name, structure, and sound. The appellant claimed that the adoption of the impugned mark was intended to deceive and create an impression in the minds of the consumers, causing confusion and wanton dilution of singularity and brand identity.
The Trial Court dismissed the suit, finding the two marks were not likely to confuse and the defendant’s use of the term was descriptive and bona fide. On appeal, the High Court of Karnataka affirmed the Trial Court’s findings and, upon comparing appellant’s brand and the defendant’s use, concluded the local business’s use of the term “Sai Renaissance” was harmless against the trademark holder’s rights, especially because of the limited reputation of the appellant’s brand within that geographical area.
Renaissance Hotel Holdings Inc. then took the matter to the Supreme Court of India, appealing the High Court’s decision, relying and reasserting a position that under Section 29(3), as long as it is shown that the marks and the goods/services are identical or similar, the law creates a presumption of likelihood of confusion, and proof of actual deception or damage is unnecessary.
The Supreme Court granted leave and heard the appeal. The appeal was allowed, setting aside the concurrent findings of the Trial Court and High Court. The Supreme Court explained how the section will apply in such cases and held that the defendant’s use of “Sai Renaissance” was statutory trademark infringement, and restored and reinforced the rights.
Issues Raised
Whether the adoption and use of the mark “Sai Renaissance” by the respondent amounts to an infringement of the appellant’s registered trademark under Section 29(2) and 29(3) of the Trade Marks Act, 1999.
Whether the statutory presumption of confusion under Section 29(3) eliminates the requirement of proving actual consumer confusion or misrepresentation when identical or similar marks are used in connection with identical or similar goods/services.
Whether the defense of honest concurrent use under Section 12 of the Trade Marks Act or the general principle of bona fide adoption by a local trader can be successfully invoked to justify the respondent’s use of a deceptively similar mark.
Whether the geographic limitation of the defendant’s operations and the absence of widespread reputation of the plaintiff’s mark in the same region can negate the claim of infringement under the Trade Marks Act.
Contentions Appellant (Renaissance Hotel Holdings Inc.):
The word “Renaissance” is a registered trademark with established goodwill and recognition, and its unauthorised use by the defendant leads to confusion among the public.
Under Section 29(3), when identical or similar marks are used about identical or similar goods or services, there is a presumption of likelihood of confusion, and actual evidence of confusion is not required. The addition of the word “Sai” does not mitigate the likelihood of confusion since the dominant element of the mark remains “Renaissance.” The use by the defendant not only infringes the statutory right but also risks diluting the distinctiveness and exclusivity of the registered mark.
Respondents (B. Vijaya Sai & Ors.):
The use of “Sai Renaissance” was in good faith and within a local context, not intending to deceive or ride on the goodwill of the appellant. There is no evidence of actual confusion in the minds of the public, and the plaintiff has not established damage to its business or reputation. The term “Renaissance” is a common English word with no inherently distinctive character, and the addition of a religious prefix “Sai” substantially distinguishes it. The geographical area of business of the defendant is confined to a small town with no competitive or commercial overlap with the appellant’s international operations.
Rationale
The Supreme Court overturned the Karnataka High Court’s decision and ruled that the use of “Sai Renaissance” did amount to trademark infringement under Section 29(3) of the Trade Marks Act. The Supreme Court stated that once it was shown that the alleged infringing mark was identical or deceptively similar to a registered trademark, and related to identical or confusingly similar services, the law presumes there would be confusion.
The Supreme Court noted that the addition of a prefix like “Sai” was insufficient to distinguish the mark from a registered trademark like “Renaissance”. In emphasising the phonetic, structural, and visual similarities, the Supreme Court made it clear that the legislative intent of Section 29(3) is to protect registered proprietors even if there is no actual confusion, especially about names in a ‘hospitality’ context. The Supreme Court clarified that honest use is a defense and is a question of fact that must be established. In this case, the defendant was not able to put forward enough evidence to show that the use was honest or had been independently adopted.
Defects In Law
The Supreme Court’s decision was undeniably significant in recognizing the rights of registered trademark owners, but it raised some potential issues regarding legislative and judicial gaps in the law:
Statutory Presumption of Confusion (Section 29(3)) is Ambiguous: Statutory presumption of likely confusion is established in Section 29(3) in cases where marks are used for identical or similar goods or services; however, the law fails to provide clear parameters for similarity. The subjective determination of “likely confusion” also varies enormously between Indian courts, contributing to inconsistent interpretations and therefore unpredictability in enforcement.
Failure to Provide Statutory Clarity on Honest Concurrent Use: While Section 12 of the Trade Marks Act provides for honest concurrent use, the law fails to set out the standards of what constitutes honest use. The Supreme Court concluded that the respondent had not proven the bona fide adoption of the mark, but did not offer substantive standards in the ruling to guide the courts or small businesses regarding future disputes raising this defence. Therefore, the concept remains underdeveloped in Indian jurisprudence.
Underdeveloped Exploration of Dilution, vs. Infringement: The ruling addressed infringement by misdirected confusion, but did not come to grips with the more generic landscape with respect to brand dilution, temporally or globally. Hence, the Courts come up short in propounding a doctrine to differentiate between confusion-based infringement or dilution-based infringement.
Geographical Reputation and Market Penetration: The Court ignored the question of whether geographical or regional reputation impacts how an assessment of confusion is made. A deeper questioning into brand availability, market penetration, and public knowledge of the availability or existence of the brand in the region of the defendant could have assisted in narrowing the claim of infringement of ICE’s mark.
Limited Discussion on the Doctrine of Proportionality: While the Court did not refer to the doctrine, the fact that it did not evaluate its application (that is, balancing the rights of major international corporations with those of local businesses acting in good faith) leads to an inflexible approach to the application of trademark law. The lingering threat is that, if applied rigidly, trademark law will dismiss small businesses and solely focus on policy changes related to those that might have a good faith intention of using commonly understood words for small businesses.
Absence of Consideration for Worldwide Practices: While Indian trademark law is framed in a way that resembles internationally accepted norms in trade, the judgment did not consider global comparative jurisprudence like the EU’s likelihood of association or the U.S. “likelihood of dilution” analysis. It would have enriched the analysis if there had been comparative context.
These gaps highlight the need for a more informed and codified framework that balances the enforcement of IP rights to respect private rights, as well as appropriate and fair usage to market naturally and by the local business community. The judgment reveals uncertainty in applying “likelihood of confusion” as used in Section 29. While the SC highlights statutory presumption, lower courts.
Interface
The judgment in Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors. is a watershed moment for the recognition and enforcement of rights concerning registered trademarks under Indian law, specifically under Section 29(3) of the Trade Marks Act, 1999. The Supreme Court, in allowing the appeal, unequivocally stated that where a registered mark is used concerning similar or identical goods or services by another party, the law will presume the existence of confusion without the burden of proving actual confusion or damage. There could not be a better affirmative shield for any trademark owner, nor better support the legislative intention that consumers be protected from confusion in the market and that brand distinctiveness be preserved from illegitimate interventions by competitors. The Court’s decision reflects the judiciary’s approach of a strict statutory interpretation of the laws of Intellectual Property, favouring recognised protected legal rights over equitable defences of bona fide adoption, small-scale use or geographical scope. By attaching such importance to the phonetic, visual, and structural similarity of marks, the decision serves to further cement the evolution of the Dominant Mark Doctrine in Indian jurisprudence.
However, the ruling also reveals a rigid and somewhat inflexible application of trademark law that may disproportionately impact small enterprises or regional businesses. In disregarding the localised nature of the defendant’s use and not fully engaging with the nuances of honest concurrent use, the judgment highlights the absence of statutory and doctrinal balance. This invites future reforms to embed equitable considerations into statutory frameworks, especially to accommodate India’s diverse market realities.
Overall, while the judgment is a victory for brand proprietors and offers legal clarity on the scope of infringement under Section 29(3), it also prompts critical reflection on the evolving contours of Indian IP law. The need for nuanced jurisprudence that balances brand protection with fair use, economic decentralisation, and regional market participation is essential to foster a more inclusive trademark regime. The decision is a reaffirmation of the statutory protection available to registered trademark owners in India, highlighting the judiciary’s preference for literal interpretation over contextual or equitable considerations. The Supreme Court has made it clear that where the statutory conditions under Section 29(3) are met, infringement will be presumed, even if the defendant acts in good faith or there is no demonstrable harm.
The ruling aligns Indian trademark jurisprudence closer to global norms, where brand protection is prioritized to foster business certainty. However, it also underscores the need for legislative reform to define and accommodate good faith use, regional usage, and proportionality in trademark enforcement.
[i] Renaissance Hotel Holdings Inc v B Vijaya Sai and Others, Civil Appeal No 404 of 2022, [2022] INSC 76 (SC).
