ROYAL ORCHID HOTELS LTD.versusKAMAT HOTELS (INDIA) LTD. & ORS.

                      [2017] 12 S.C.R. 217



                 ROYAL ORCHID HOTELS LTD.                              A
                                 v.
            KAMAT HOTELS (INDIA) LTD. & ORS.
            (Special Leave Petition (C) No.6131 of 2015)
                       DECEMBER 14, 2017                               B
        [RANJAN GOGOi AND R. BANUMATHI, JJ.]
        Intellectual property: Trademark - Registration of trade mark
of petitioner refused by Deputy Registrar on the ground that the
petitioner was not the first user of the logo/mark 'Royal Orchid' as C
claimed and in fact, the mark/logo 'Orchid' was being used by
respondents no.I from an anterior date and also the two logos/
marks were similar - IPAB set aside the order of Deputy Registrar
and allowed the registration of petitioner's trademark in class 42
holding that use of mark by petitioner was prior in point of time
and considering the class of customers serviced by the parties, no D
confusion was likely to be caused by use of two logos/marks - High
Court set aside the order of IPAB - Special leave petition - Held:
The judgment of High Court was arrived at after elaborate
consideration of the materials and evidence adduced by the parties
before it - The conclusions reached by High Court cannot be said E
to be, in anyway, unreasonable and/or unacceptable - Rather, the
view recorded by the High Court was a perfectly possible and
justified - Inteiference with the order of High Court not called for.
      Dismissing the Special Leave Petition, the Court
      HELD: The High Court observed that the view expressed            F
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. 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       G
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, the present petition really turns on
the question of appreciation of the evidence on record. The
conclusions reached by the High Court cannot be said to be, in         H
                              217
218            SUPREME COURT REPORTS                         [2017] 12 S:C.R.



A     anyway, unreasonable and/or unacceptable. Rather, the view
      recorded by the High Court is a perfectly possible and justified
      and the conclusion(s) reached can reasonably flow from a balanced
      consideration of the evidence and materials on record. [Paras
      14, 15] [221-C-F]
B            CIVIL APPELLATE JURISDICTION: Special Leave Petition
      (Civil)No.6131 of2015.
            From the final Order dated 11.02.2015 of the High Court of
      Judicature at Madras in W.P. No.22691/2013.
           Sudhir Chandra, Sr. Adv, Pravin Anand, Shrawan Chopra, Aditya
c     Verma, Pundreek Dwivedi, Nikhil Krishnamoorthi, Vikas Singh Jangra,
      Ms.Jennifer Rohita Xavier, Ms. S. Lakshmi, Adv• for the Appellant.
            B.H. Marlapalle, Shyam Divan, Sr. Advs, Aniruddha P. Mayee,
      Ajit Wagh, Chirag Jain, Advs for the Respondents.
            The Judgment of the Court was delivered by
D
            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.
 E
            2. The bnt:f 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. I before the Intellectual Property Appellate
 F
      Board (for short, 'lPAB') which dismissed the challenge-on 04.10.2011.
      The respondent No. I 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 again~t the order
      of the High Court was also dismissed by this Court on 01.09.2014. The
 G    dispute with regard to registration of the trademarks 'Royal Orchid' and
      Royal Orchid Hotels in class 16, therefore, has attained finality in Jaw.
             3. It appears that the petitioner sometime in the year 2004 applied
      for registration of its aforesaid trad~marks in class 42. This was refused
      by the Deputy Registrar of the Trademarks. In appeal, the IPAB by
 H    order dated 18.06.2013 set aside the order of the Deputy Registrar and
 ROYAL ORCHID HOTELS LTD. v. KAMAT HOTELS (INDIA)                              2I9
          LTD. & ORS. [RANJAN GOGOI, J. ]

allowed the registration of the petitioner's trademark in class 42. The        A
respondent No. I had approached the High Court by instituting a Writ
Proceeding registered and numbered as Writ Petition No.22691 of20I 3.
The same has been allowed by the impugned order dated I l.02.20I5.
Aggrieved, this special leave petition has been filed seeking leave to
appeal against the aforesaid order of the High Court dated I I .02.20I5.
                                                                               B
       4. It may be necessary to notice at this stage that the respondent
No. I 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         c
Orchid" to the petitioner in class 42 was on a 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. I from an anterior date.
                                                                               D
       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
                                                                               E
a change ofits name in the year 1997 pursuant to the company's resolution
dated 30.09. I 996 which is prior in point of time to the use of the mark of
the respondent no. I.
        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
                                                                               F
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
                                                                               G
following two questions for decision;
       I. Who is the prior user of the word "Orchid/Royal Orchid" ?
       2. Whether the trademark "Orchid" of the third respondent are
          deceptively similar •md the adoption of the said trademark by
          the third respondent is dishonest ?"                                 H
220             SUPREME COURT REPORTS                           [2017] 12 S.C.R.



A            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 is the respondent who is the first user was arrived
B
      at on such consideratior.. 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. i 999. 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
c     dated 30.09.1996 had, in fact, commenced its business in the year 2001
      in which year the flagship hotel of the petition~r 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
D
      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'.
             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
E     between the parues 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 of2014 filed by the present respondentNo.1 against the said order
 F    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 of2014 is in.the following terms:
 G           "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 would not have
             any bearing on the appeals pending before the Appellate Board or
 H
 ROYAL ORCHID HOTELS LTD. v. KAMAT HOTELS (INDIA)                                   221
          LTD. & ORS. [RANJAN GOGOi, J. ]

       any decision taken therein. We make it clear that the said                   A
       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           B
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                 c
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 on the
second question fommlated by it the writ petition has to be allowed and             D
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           E
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              F
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 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.                                          G


Devika Gujral                                                 Petition dismissed.