Royal Orchid Hotels Ltd. vs Kamat Hotels (India) Ltd .

The petitioner – 'Royal Orchid Hotels

Limited' got registration of its trademark ‘Royal

Orchid’ and 'Royal Orchid Hotels' in class 16

sometime in the year 2005. The aforesaid

registration was challenged by the Respondent

No.1 before the Intellectual Property Appellate

Board (for short, 'IPAB') which dismissed the

challenge on 04.10.2011. The respondent No.1

approached the High Court of Madras by

instituting Writ Petition Nos.26544-26545 of

2011, which was dismissed by the High Court on

07.02.2014. The special leave petition against

the order of the High Court was also dismissed by

this Court on 01.09.2014. The dispute with regard

to registration of the trademarks 'Royal Orchid'

and Royal Orchid Hotels in class 16, therefore,

has attained finality in law.

3. It appears that the petitioner sometime in

the year 2004 applied for registration of its

aforesaid trademarks in class 42. This was 3

refused by the Deputy Registrar of the

Trademarks. In appeal, the IPAB by order dated

18.06.2013 set aside the order of the Deputy

Registrar and allowed the registration of the

petitioner's trademark in class 42. The

respondent No.1 had approached the High Court by

instituting a Writ Proceeding registered and

numbered as Writ Petition No.22691 of 2013. The

same has been allowed by the impugned order dated

11.02.2015. Aggrieved, this special leave

petition has been filed seeking leave to appeal

against the aforesaid order of the High Court

dated 11.02.2015.

4. It may be necessary to notice at this stage

that the respondent No.1 had got its trademark

'Orchid' registered in class 42 sometime in the

year 2007.

5. A reading of the order of the Deputy

Registrar dated 29.06.2009 would go to show that

the refusal of registration of trade mark “Royal

Orchid” to the petitioner in class 42 was on a 4

consideration of the evidence and materials laid

before the said authority. On such consideration

the Deputy Registrar concluded that the

petitioner was not the first user of the

logo/mark 'Royal Orchid' as claimed and, in fact,

the mark/logo 'Orchid' was being used by the

respondent No.1 from an anterior date.

6. The similarity of the two logos/marks was

also taken into account by the Deputy Registrar

in refusing registration to the petitioner.

7. The IPAB, in appeal, reversed the aforesaid

conclusion of the Deputy Registrar primarily on

the ground that the petitioner-company had been

incorporated as 'Royal Orchid Hotels Limited'

after effecting a change of its name in the year

1997 pursuant to the company's resolution dated

30.09.1996 which is prior in point of time to the

use of the mark of the respondent no.1.

8. The IPAB also was of the view that

considering the class of customers that would be

serviced by the parties before it, no confusion 5

is likely to be caused by use of two logos/marks

i.e. 'Royal Orchid Hotels Limited' and 'Orchid'

respectively. This is an additional ground on

which the petitioner’s claim for registration in

class 42 was allowed by the learned IPAB.

9. In appeal by the respondents, the High

Court framed the following two questions for

decision ;

1. Who is the prior user of the word “Orchid/Royal Orchid” ?

2. Whether the trademark “Orchid” of the third respondent are deceptively similar and the adoption of the said trademark by the third respondent is dishonest ?”

10. A reading of the discussions on question

No.1 by the High Court goes to show that the

conclusion recorded in the impugned order of the

High Court dated 11.02.2015 is based on a

detailed consideration of the materials brought

on record by both the parties. The conclusion

that the petitioner had not demonstrated that it

was the first user of the logo/mark and that it 6

is the respondent who is the first user was

arrived at on such consideration. In fact, from

the very application for registration filed by

the petitioner on 22.06.2004 it is evident that

the petitioner had claimed user since 03.11.1999.

The High Court also came to the conclusion that

'Royal Orchid Hotels Limited' though came to be

incorporated on 10.04.1997 on the basis of the

company's resolution dated 30.09.1996 had, in

fact, commenced its business in the year 2001 in

which year the flagship hotel of the petitioner

company i.e. Royal Orchid Hotels Limited was set

up on land leased by the Karnataka State Tourism

Development Corporation. The claim of use of a

banquet hall in hotel Harsha by naming it as

Orchid in the year 1990 and use thereof till the

year 1993 was also considered by the High Court.

The said plea urged was rejected on the ground

that there was no evidence brought on record to

show continuous use of the aforesaid banquet hall

by use of the word/mark ‘Orchid’.

7

11. How far and to what extent the order of the

High Court dated 07-02-2014 in favour of the

present petitioner in the earlier litigation

between the parties relating to registration in

class 16 would foreclose the dispute with regard

to registration in class 42 was also considered

by the High Court. In this regard, the High Court

took note of the order of this Court dated

01-09-2014 in Special Leave Petition (C) Nos.

8902-8903 of 2014 filed by the present respondent

No.1 against the said order of the High Court

(dated 07.02.2014) to hold that there was no

embargo imposed on the High Court by the order of

this Court in so far the issue relating to

registration of class 42 is concerned.

12. The order of this Court dated 01.09.2014 in

Special Leave Petition (C) Nos. 8902-8903 of 2014

is in the following terms:

“We are not inclined to interfere with the order impugned herein. The Special Leave Petitions are dismissed. Moreover, the Division Bench has already made it very clear in paragraph 31 that whatever observations made by it in the judgment 8

would not have any bearing on the appeals pending before the Appellate Board or any decision taken therein. We make it clear that the said observations will be applicable even to any other civil suit pending between the parties.”

13. If the High Court, in view of the above,

understood to be uninhibited in deciding the

rival claims so far as registration in Class 42

is concerned, such an understanding and the

decision on basis thereof cannot be faulted.

14. The High Court was also of the view that

notwithstanding the class of customers serviced

by the parties before it, it cannot be said that

the two logos/marks would not give rise to

confusion amongst the customers using the Hotels.

In this regard, the High Court observed that the

view expressed by the IPAB that having regard to

the class of customers serviced by the hotels

(High Income) there could be no possibility of

being misled cannot be accepted as a general

proposition and will always depend on individual

customers. As the marks/logos were largely

similar, the High Court took the view that even 9

on the second question formulated by it the writ

petition has to be allowed and the order of the

IPAB set aside.

15. If the High Court on an elaborate

consideration of the materials and evidence

adduced by the parties before it had thought it

proper to reach a conclusion consistent with the

findings of the primary authority i.e. the Deputy

Registrar and the reasons for reversal of the

view of the primary authority by the IPAB being

summary, as noticed, the present petition really

turns on the question of appreciation of the

evidence on record. Having considered the matter

we are of the view that the conclusions reached

by the High Court cannot be said to be, in

anyway, unreasonable and/or unacceptable.

Rather, we are inclined to hold that the view

recorded by the High Court is a perfectly

possible and justified view of the matter and the

conclusion(s) reached can reasonably flow from a

balanced consideration of the evidence and

materials on record. We will, therefore, not 10

consider the present to be a fit case for

interference with the order of the High Court.

Accordingly, we dismiss the Special Leave

Petition and refuse leave to appeal.

....................,J.

(RANJAN GOGOI)

....................,J.

(R. BANUMATHI)

NEW DELHI DECEMBER 14, 2017