The Supreme Court by its judgement dated December 14, 2017, in the matter of Royal Orchid Hotels Ltd. v. Kamat Hotels (India) Ltd. & Ors. upheld the Madras High Court’s order dated February 11, 2015, favoring Kamat Hotels (India) Ltd. holding that Petitioner had not demonstrated that it was the first user of the logo/mark ‘Orchid’ and ‘Royal Orchid’ and that it is the Respondent who is the first user of the mark as arrived at on this conclusion by the High Court.

Brief Background

• The Petitioner in this case, ‘Royal Orchid Hotels Ltd.’ obtained registration of its trademarks ‘Royal Orchid’ and ‘Royal Orchid Hotels’ in class 16 in the year 2005. The Kamat Hotels (India) Ltd. (hereinafter referred to as ‘Respondent No.1’ challenged such registration before the IPAB (Intellectual Property Appellate Board), which was dismissed on October 14, 2011.

• The Respondent then approached the High Court of Madras by way of Writ Petition Nos. 26544-26545 of 2011, which were also dismissed by the High Court on February 07, 2014.

• Hon’ble Supreme Court also dismissed the Special Leave Petition against the order of the High Court on September 09, 2014. Thus, the dispute with regard to the registration of the trademarks “Royal Orchid” and “Royal Orchid Hotels” in Class 16 attained finality in law.

• The Petitioner sometime in the year 2004, applied for the registration of its marks ‘Royal Orchid’ and ‘Royal Orchid Hotels’ in Class 42, which were rejected by the Deputy Registrar of Trademarks. In appeal, the IPAB by an order dated June 18, 2013 set aside the order of the Deputy Registrar of the Trademarks and allowed registration of the Petitioner’s trademarks in Class 42.

• The Respondent No. 1 against the order dated June 18, 2013 of the IPAB, approached the High Court by instituting a Writ Petition No. 22691 of 2013, which was allowed by the impugned order dated February 11, 2015. Against this order, the Petitioner filed the Special leave Petition. It may be mentioned that the Respondent No. 1 had registered its trademark “Orchid” under class 42 sometime in 2007.

• A reading of the order of the Deputy Registrar dated June 29, 2009 showed that the refusal of registration of trademark, ‘Royal Orchid’ in Class 42 to the Petitioner was issued on a consideration of evidence and materials placed before the Authority, on such consideration the Deputy Registrar of Trademarks came to the conclusion that the Petitioner was not the first user of the logo/mark “Royal Orchid” and in fact logo/mark ‘Orchid’ was being used by Respondent no. 1 from an anterior date. The Deputy Registrar also took into consideration the similarity in the two logo/mark in refusing registration to the Petitioner.

• The IPAB in appeal had reversed the aforesaid refusal of registration on the ground that the Petitioner-Company had been incorporated as ‘Royal Orchid Hotels Limited’ after affecting a change of its name in 1997 pursuant to the company’s resolution dated September 30, 1996, which is prior in point of time to use of the mark of Respondent no. 1. The IPAB was also of the view that no confusion is likely to be caused by use of two logos/marks i.e. 'Royal Orchid Hotels Limited' and 'Orchid' respectively. On this additional ground also, the Petitioner claimed for registration in Class 42 was allowed by the IPAB.

Issue

On appeal by the Respondents, the Issues framed by the High Court are as following;

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

• Whether the trademark “Orchid” of the third Respondent are deceptively similar and the adoption of the said trademark by the third Respondent is dishonest?”

Courts’ Decision

The hon’ble Supreme Court observed that after discussion on the first question of the High Court goes to show that the conclusion recorded in the impugned order dated February 11, 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 is the Respondent no. 1 who is the first user of the logo/mark. The Hon’ble Supreme Court also did not find any fault in the understanding and the decision on that basis is that there was no inhibition in deciding the rival claims as far as registration in Class 42 is concerned. The High Court’s finding that the two logos/marks being similar would give rise to confusion amongst the customers using the Hotels.

Thus, the Hon’ble Supreme Court while dismissing the Petition held that having considered the matter and the conclusions reached by the High Court cannot be said to be, in anyway, unreasonable and/or unacceptable. Rather, the Hon’ble Supreme Court held that the view recorded by the High Court is a perfectly possible and justified in view of the matter and the conclusion(s) reached can reasonably flow from a balanced consideration of the evidence and materials on record. The hon’ble Supreme court held that it will, therefore, not consider the present to be a fit case for interference with the order of the High Court’.