1
REPORTABLE
IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE JURISDICTION
SPECIAL LEAVE PETITION (C) NO.6131 OF 2015
ROYAL ORCHID HOTELS LTD. … PETITIONER(S)
VERSUS
KAMAT HOTELS (INDIA) LTD. & ORS. … RESPONDENT(S)
J U D G M E N T
RANJAN GOGOI, J.
1. After hearing the matter elaborately we
arrive at the conclusion that the Special Leave
Petition ought not to be entertained. However, in
view of the extensive arguments at the Bar we
deem it appropriate to support our aforesaid
conclusion with the reasons therefor.
2
2. The brief facts are as follows:
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
REPORTABLE
IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE JURISDICTION
SPECIAL LEAVE PETITION (C) NO.6131 OF 2015
ROYAL ORCHID HOTELS LTD. … PETITIONER(S)
VERSUS
KAMAT HOTELS (INDIA) LTD. & ORS. … RESPONDENT(S)
J U D G M E N T
RANJAN GOGOI, J.
1. After hearing the matter elaborately we
arrive at the conclusion that the Special Leave
Petition ought not to be entertained. However, in
view of the extensive arguments at the Bar we
deem it appropriate to support our aforesaid
conclusion with the reasons therefor.
2
2. The brief facts are as follows:
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
