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