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Judgment
Prabha Sridevan, J
These appeals are directed against the dismissal of application No. 1291697 (O.A. No. 74 of 2003) and application No. 1291696 (O.A. No. 75 of
2003) of Royal Orchid Hotels Limited both the marks being word per se in respect of the services in class 42. The applications were made on
22.6.2004, the user claim was from 3.11.1999. The marks were advertised before acceptance in the journal on 15.6.2005. Notice of opposition was
filed on 12.1.2006. After completion of filing of pleadings and evidences, both the opposition proceedings were heard on 12.6.2009. The Deputy
Registrar found that the marks were not registrable since the only registrable feature in the marks was the word 'Orchid', which was identical to the
opponent's trade mark and held that the opponent's mark was very well known and highly distinctive and that adoption of the marks by the appellants
was dishonest. On these grounds inter alia, these applications were dismissed and hence both these appeals have been filed. The pleadings are almost
identical in both the matters. In the notice of opposition the respondent contended that they are established providers of service such as hotels,
restaurants, catering etc. They had been continuously using the trade mark since 1st January, 1997. In respect of their services and goods they have
been giving wide publicity and have spent lakhs of rupees in publicity and on sales promotion. Their marks are immensely popular and they have made
applications for registration of the mark in several classes, the details of which are given in the annexure. According to the respondent the appellants
impugned trade marks contains the word ""orchid"" as the leading and essential feature which is identical with the respondent's trade mark ""orchid"". The
applicants have merely added the descriptive word ""Royal"" and ""Hotels Limited"" which are really not relevant. The respondent's mark is well known,
the applicants should have conducted a market survey before applying for registration. The adoption is dishonest. The claim of user from 3.11.1999
was denied. On these grounds they opposed the registration.
In the counter statement the appellants/applicants submitted that the opposition was not maintainable, since the applicants were the prior adopter
and using of the mark in relation to hotel business for more than 20 years and they are the prior conceiver and adopter of the mark. The applicant M/s.
Royal Orchid Hotels Limited was established in 1986 as ""Universal Resorts Limited"". They had spent considerable amount in advertising and
promoting the marks. The applicants right in the trade mark ""Royal Orchid"" and ""Royal Orchid Hotels"" are recognized by the trade mark registry,
which has granted registration of the said mark. The applicant denied the user claimed by the opponent and their proprietary right. The applicant had
been using the mark for 20 years at least from 1997 prior to the opening of the respondent's hotel. Steps are being taken to amend the statement of
user in the subject matter application. The applicant's marks are prima facie distinctive. The respondent cannot claim exclusive right to the word
'Orchid'.
Both the parties filed evidence to show user.
The learned counsel for the appellant submitted that their user is actually before 1.1.1997 and in the counter statement it has been categorically
asserted that they would amend the ""user"" which was ignored by the Registrar. The learned counsel submitted that in many of the invoices filed by the
respondent, there is no mention of ""Orchid"". The learned counsel submitted that they had produced documents to show that Royal Orchid Hotels
Limited was incorporated in 1986 and that the name of Universal Resorts got renamed ""Royal Orchid Hotels Limited"". This document shows the
various features like financial outlook, cash flow statement etc. of the appellant. The learned counsel also submitted that the documents given by the
Chartered Accountant which showed financial statement from the year 2001-2002 and there are also invoices. The learned counsel referred to the
affidavit filed in support of their applications where at page 15 it is stated that the respondent had approached the Tribunal with unclean hands since
they had claimed user from 1.1.1997. Its own website shows that it was partially open to the public only on 27.9.1997. This document i.e., website has
also been produced by the appellant. The learned counsel referred to the letter produced by the respondent dated 28.12.1995 addressed to the
Advertising Agency regarding the new venture ""The Orchid"" and submitted these documents are internal communication and the world would not
have known of the adoption of the mark. The learned counsel submitted that the Certificate of achievement produced by the respondent shows 10
years existence from 1997 to 2007. The learned counsel has referred to Hotel and Food Services which is a magazine of the Hotel Industry in which
there is a reference to the Royal Orchid Hotels Project started in the late 1990s. Learned counsel also referred to page 636 of the typed-set where it
refers to the hotel Royal Orchid Hotels as flagship hotel set up in 2009 and the land leased from Karnataka State Tourism Development Corporation
and there is also a reference to the lease deeds having been entered into in August, 1992. He referred to the document at page 670 which again
speaks of the change of name of Universal Resorts Limited to Royal Orchid Hotels Limited on 10.4.1997. The learned counsel submitted that the
impugned orders suffers from the following flaws:
The Registrar erred in holding that the only registered portion is ""Orchid"", when it is well settled that marks have to be compared as a whole. The
Registrar also erred in concluding the adoption was dishonest when the appellant company was registered Royal Orchid Hotels Limited on 10th April,
1997. The learned counsel submitted that the Registrar also ignored the registration of the same marks in Class 16 which has been accepted by the
Trade Marks Registry. The learned counsel submitted that when there is no evidence of user from 1st January, 1997 it passes comprehension how the
Registrar erred that there is consistent user from September, 1997. The learned counsel submitted that there was no evidence to show that the mark
was well known and the seal of approval given by the Registrar is not justified. The learned counsel submitted that even if the Registrar was right in
holding that the marks were similar, then the appellant mark should have been registered on the basis of honest concurrent user.
The learned counsel for the respondent submitted that the appellant has not proved the user and that the appellant has only shown some newsletters
which had no indication that there was public use. To show prior user, the onus is upon the appellant. The appellant has produced documents which
belie their user and they cannot support their case. The impugned marks are Royal orchid and Royal Orchid Hotels and therefore there is a clear
similarity. The plea of Section 12 regarding honest concurrent user was not raised nor was the benefit of Section 17 pleaded before the Registrar.
There is nothing to show the connection between Harsha Convention Center and the appellant. All the journals and the newsletters are captive
documents and cannot be relied on. The documents from page 349 onwards appreciating the newsletter are contrived and unreliable. The Royal
Orchid Hotels Private Limited was born only on 2001 after the adoption and user by the respondent. In the statement of case the appellant has
pleaded that it would be filing for TM - 16 to change the date of user but there is no such evidence. On the other hand, the respondent orchid is in
existence since 1987. He referred to the Times of India news item on 20.3.1997, which carries advertisement of the Orchid. He too referred to the
certificate of appreciation by Ecotel. He referred to various invoices which show that his services were advertised even before 2001. He referred to
various documents to show that the respondent's customers came from all over the world to the Orchid and therefore there was brand value. It would
not matter whether it is a well known mark or a distinctive mark and the question is who is the prior adopter. The learned counsel submitted that the
commencement on 1st January, 1997 is not seriously challenged. He referred to the document at page 692 where the magazine industry has referred
to Royal Orchid Hotels Limited. While showing the registered office it had given registered office of the respondent and while referring to the key
persons on the Board it had referred to the members on the respondent Board of Directors. Therefore it was clear that there was confusion. The
learned counsel submitted that the link between Harsha and the appellant was not established, even assuming without admitting that Harsha is a bona
fide user. The adoption of Orchid should have been by Universal Resorts and not by Harsha Continental. Prior user can get protection only if section
34 is established.
In reply, the only document of the respondent to show user prior to 1.4.1997 are all internal. The learned counsel submitted that every document has
to be read as a whole and the building activity took place from 1999 to 2001. Huge Five Star Hotels do not come up overnight and therefore the fact
that the building came up in 2001 will not take away from the merit of the appellant's claim. The learned counsel submitted that the appellant had not
filed any suit because he did not doubt confusion though his user was prior. He also submitted that one must remember the class of customer who visit
Five Star Hotels to decide the issue of confusion. The learned counsel submitted that section 17 need not be pleaded as it is only an enabling Section.
There is no evidence of confusion and the appellant has proved that the appeals must be allowed.
The following decisions were relied on by the appellant:-
a) In Century Traders Vs. Roshan Lal Duggar Co. AIR 1978 Delhi 250), Delhi High Court held that to obtain injunction prior user must be proved.
b) In Usha Intercontinental Ltd. & Others Vs. Usha Television Ltd. (1987 PTC 240-A) it was held that injunction was granted because the marks
were identical.
c) In Goenka Institute of Education & Research Vs. Anjani Kumar Goenka & Another AIR 2009 Delhi 139), mere registration cannot confer right
without user.
d) In Mars Incorporatead Vs. Kumar Krishna Mukerjee and Others 2003 (26) PTC 60 (Delhi), it was held that the action of the infringement was
mala fide and where injury is apprehended and a quia timet action can be maintained.
e) Montari Overseas Ltd. Vs. Montari Industries Limited (1996 PTC (16), regarding the issue of the similar company, the Division Bench of the Delhi
High Court held that the remedy if any of the person aggrieved is to approach the civil court.
The learned counsel would also refer to Law of Trade Marks & Geographical Indications 2003 Edition and submitted that with regard to Section 17
though the provision for disclaimer was deleted, the new Section must be understood to mean that the exclusive right is for the user of the mark as a
whole.
The respondent relied on in Wander Ltd. and Another Vs. Antox India P. Ltd., 1990 (suppl) SCC 727) wherein the Hon'ble Supreme Court held
that the Appellate Court may not interfere with the exercise of discretion of the court at the first instance unless it is arbitrary or perverse.
In Bengal Immunity Co., Ltd. Vs. Denver Chemical Manufacturing Co. and Others: AIR 1959 Cal 636) it is held as follows:
I find it impossible to accept as correct the proposition of law that even where concurrent use has been proved to be dishonest it is open to the
Registrar to permit registration on the basis of ""other special circumstances"". As I read the Section, the intention of the legislature clearly was that in
two classes of cases registration would be permitted when there is identity or resemblance likely to deceive or cause confusion--the first class to
consist of cases of honest concurrent use and the second class to consist of cases where there are special circumstances not being cases of dishonest
concurrent use. It is well to remember that the whole idea behind the law of registration of trade marks is to prevent fraudulent use of the marks of
one proprietor by another proprietor.
In T.G. Balaji Chettiar Vs. Hindustan Lever Ltd. Bombay AIR 1967 Mad 148 (V 54 C 44), the Hon'ble Madras High Court held as follows:
The user, if any, can by no means be said to be honest. At every time the respondents have been objecting to and at every stage the appellant has
been resorting to one device or other to imitate the trade mark of the respondents and thus capture the trade. It is a deliberate attempt to cause
deception and confusion. In short, the instant case betrays a total lack of commercial honesty required under Section 12(3). Even in the conduct of the
proceedings, I must say that the appellant is guilty of over-reaching. He has suppressed material documents and has not produced the evidence about
the sales.
In Bal Pharma Ltd. Vs. Centaur Laboratories Pvt. Ltd. & Another 2002 (24) PTC 226 (BOM) (DB)), in paragraph 9 it has been stated as
follows:
The judgment indicates that in a situation where the defendant to an action has been using the mark, even if concurrently, without making himself
aware of the fact as to whether the same mark is the subject-matter of the registration and belongs to another person, the first person cannot be heard
to complain for he has been using it negligently inasmuch as he has not taken the elementary precaution of making himself aware by looking at the
public record of Registrar as to whether the mark in question is the property of another. If, however, he had taken search and, knowing full well that
the mark was the property of another person, continues to use the mark, then he runs the risk of a registered proprietor challenging his action for
infringement and merely because it is done at a subsequent stage, he cannot be heard to complain on the ground of delay.
In Rajive Paul Vs. Princeson Jose & Another 2006 (32) PTC 705 (IPAB), it is held in paragraph 16 as follows:
The next contention of the learned counsel for the appellant that the claim of the appellant for registration under Section 12(3) of the said Act ought to
have been considered. Section 12(3) of the old Act corresponds to Section 12 is almost in pari materia. What is contemplated under Section 12 is
honest and concurrent use. Definitely the appellant cannot be considered to be an honest concurrent user especially in the absence of any plea that the
appellant was not aware about the trade name of the respondent ""Prince Jewellery"" at the time when he included the word 'Prince"" along with their
earlier adopted trade mark. As already discussed, in the absence of any valid reason for the change of name and the necessity to include the word
Prince"" in the place of the word ""fashion"" in Chungath Fashion Jewellery' the original trade name and mark of the appellant there is lack of bona fides
in the conduct of the appellant in adopting the impugned trade mark.
In Karnataka Co-operative Milk Producers Federation Limited Vs. N. Anand & A. Narasimha Rupesh Nand, Trading as M/s. Nandhini Deluxe &
Others2011 (48) PTC 359 (IPAB), in paragraph 14, it is held as follows:
So each case has to be decided on the basis of the facts on hand. With regard to the appellant's mark we find that one of the documents which is the
Kannada Weekly Sudha where it is stated that ""I am using NANDHINI. You?"" In Tharanga Kannada Weekly, ""Nandhini Ghee has a role in every
moment of life Celebration"" (Translated from Kannada). These are pieces of evidence to show that the word Nandhini itself has become associated
with the appellant's products and therefore though it might be a Hindu name, or even a deity""s name, it has come to be recognized as a distinctive
mark of the appellant by the appellant's use of the same for nearly two decades. The conclusion of the Registrar that it is not likely to confuse cannot
be sustained. The word is identical. The addition of a letter H by the respondent cannot make a difference. Whether it is Nandhini or Nandhini, it is
pronounced identically. And in Kannada there is no difference in the spelling of the trademark of the appellant and that of the respondent.
In Ruston & Hornsby Ltd. Vs. Zamindara Engineering Co. PTC (Suppl.) (1) 175 (SC), the Division Bench of the Hon'ble Apex Court held as
follows:
In the present case, the High Court has found that there is a deceptive resemblance between the word 'RUSTON"" and the word ""RUSTAM"" and
therefore the use of the bare word ''RUSTAM"" constituted infringement of the plaintiff's trade mark ""RUSTON"". The respondent has not brought an
appeal against the judgment of the High Court on this point and it is, therefore, not open to him to challenge that finding. If the respondent's trade mark
is deceptively similar to that of the appellant the fact that the word ""INDIA"" is added to the respondent's trade mark is of no consequence and the
appellant is entitled to succeed in its action for infringement of its trade mark.
Injunction was granted since it was held that there was deceptively similar.
In Indo-Pharma Pharmaceutical Works Private Limited Vs. Pharmaceutical Company of India (The MANU/MH/0239/1977 : Bombay Law
Reporter Volume LXXX 73), it has been reported as follows:
The section thus provides that if the opposition to the application for registration or the claim for injunction is based on the fact that the opponent or the
plaintiff is the proprietor of a registered trade mark, then the opposition must be rejected or relief denied if the applicant or defendant to the suit is able
to establish that he used his trade mark, in respect of which opposition is made or relief sought, continuously prior to the date of registration of the
opponent's or plaintiff's registered trade mark. Thus a plain and bare reading of Section 33 would seem to suggest that if continuous and prior user (as
explained in the section) is proved, the opposition must fail before the Registrar and the relief for injunction refused by the court. The section does not
provide for the opposition to fail partially only and succeed partially. Similarly the section does not suggest that in the suit some limited relief may be
granted despite proof of prior continuous user.
Since prior user was not shown, injunction was not granted.
The documents that have been filed by the appellant are newsletters from Harsha Hotels and Convention Center at No. 11, Venkataswamy Naidu
Road, Bangalore. The first document shows that the Banquet Hall is christened Orchid Rooms. The next document is the same newsletter in volume
II. It again refers to the Orchid room where one could celebrate a wedding at concession like coupon valid upto 30th September, 1992. There are
many documents like this which are attacked by the learned counsel for the respondent because they have no dates and there is nothing to show that
the printing of the newsletters would mean user. The appellant had produced letters from Punjab Crockery House dated 27th April, 1992, Nagaraj &
Nagaraj Management Services dated 8th May, 1992, HMT Limited dated 18.8.1993. Premier Automobiles dated 16th August, 1993 and so on of
which reference was made.
We do not think that these documents can be rejected totally as the documents by captive customers. This only shows that there was a Banquet
Hall in Harsha Hotel which was called the Orchid Room. In the business magazine of the industry in 2008, we find history of the development of the
Royal Orchid Hotels project. It shows that the land was bought in 1999 and by 2001 the hotel had opened and the Royal Orchid Hotels group was
born. It refers to hotel Harsha being the first property of the Baljee's Group. The appellant had produced documents to show that license obtained
from the Director of the Town and Country planning in 2001. The appellant has produced a certificate of incorporation issued by the ROC that Royal
Orchid Hotels Limited was originally incorporated as Universal Resorts Limited on 3.7.1986 and has changed its name to Royal Orchid Hotels
Limited. The fresh certificates of incorporation which are change of name is dated 10.4.1997 it shows that the Universal Resorts Limited had changed
its name into Royal Orchid Hotels Limited. On 29.3.1997 there was a special resolution to change the name of the Company from Universal Resorts
Limited to Royal Orchid Hotels Limited as approved by the Registrar of Companies name change approval letter dated 25.4.1996. On 30.9.1996 there
is a special resolution which had recorded that in the previous Annual General Meeting the company shareholders had decided to change its name into
Royal Orchid Hotels Private Limited and that this name had been approved by the Registrar of Companies. In the application for change of name of
the company, there is a column to show the details of ascertaining from the Registrar of Companies, the availability of proposed name. This is
STAT/CN/14654/94-95. Therefore even if one does not take into reckoning the documents which is a hotel business industry documents which speaks
of the common ownership of Harsha Hotels and Convention Centre and the appellant herein, it is clear from this public documents, which are under
the Companies Act that the Registrar of Companies had given his approval for the name change to Royal Orchid Hotels Private Limited even in 1996.
In the Montari's case cited above, the Division Bench had clearly held that under Section 20 of the Companies Act 1956, a company's name is held to
be undesirable if it is identical or too nearly resembles the name by which a company in existence has been previously registered. In this case, the
Registrar of Companies had given his approval to the name change of Universal Resorts to Royal Orchid Hotels Private Limited and therefore the
adoption of the name cannot be said to be mala fide, since the adoption of ""Royal Orchid Hotels Private Limited"" was the proposed name and it had
taken place even before the respondent alleged date of adoption.
In Ashok Chandra Rakhit Ltd.'s case the Hon'ble Supreme Court has clearly held that the Registrar gives the owner the exclusive right the mark
as a whole and it needs no repetition that when we compare the marks we should compare the marks taking them as a whole and he cannot dissect.
Here one mark is ""Orchid"" and the other mark is ""Royal Orchid"" or ""Royal Orchid Hotels Limited"", The individual words are not distinctive by
themselves, but the appellant does not claim exclusive right to the word ""Orchid"" or the word ""Royal"". He seeks the registration of the words ""Royal
Orchid"" and ""Royal Orchid Hotels"" taken as a whole. We are unable to see how the ""Royal Orchid Hotels"" is similar to ""Orchid"". The Registrar
clearly ignored the principle by tearing the word ""Orchid"" out the impugned mark as a whole and arrived at the conclusion that the adoption was
dishonest. The respondent had totally ignored that the appellant had adopted Royal Orchid Hotels for his company's name even before the respondent
adopted the trade mark Orchid.
The respondent had filed ORA 216 and 217 of 2008 for rectification of the marks ""Royal Orchid"", but for class 16. By an order dated 4.10.2011
this Board (Different Bench) had dismissed the rectification applications. All the issues that are raised here were raised. In that judgment it was held
that the documents including the open house newsletter proved that the respondent or their predecessors-in-interest had used the word ""Orchid
though in connection with Banquet Hall in 1992 long before the respondent ""Orchid"" was established, which is only in 1997. In this order it was also
held that the documents under the Companies Act cannot be disputed and the resolution to change the name Royal Orchid Hotels Limited was in 1996
and again before the alleged user by the respondent. This order also held that the appellant herein along with Baljee's Hotels Limited and Hotel Stay
had a commonality of the business. The Registration Certificate by a ROC for change of the name will not amount to user, but herein this application
user claim is only from 3.11.1999. It was in 3.11.1999 that the commencement of the building was started and completed in 2001. The Board had also
held that the word Royal Orchid must be taken as a whole. The following extract from the earlier order:
Under Section 57 of the Act we have the same discretionary power. The documents produced by the respondent to show user with relation to goods
under class 16 are their menu cards, letterheads etc. Of course these documents do not bear any date. In Five Star restaurants such goods along with
toiletry material are all provided to the guests and they should definitely be considered to be used in the course of the trade which is the hotel business.
It cannot be equated to use on educational materials distributed in workshops, seminars etc. This is really commercial use. This applies both to the
applicant and the respondent. If in the Hermes case, it was held that if positive steps are taken to acquire the goods to be marked under the mark it is
bona fide use. In the present case we have the change of name in 1996 to indicate the intention to commence the hotel business, the actual acquisition
of hotel of Harsha which became Royal Orchid Harsha, and the establishment of several other hotels under the name ROH. All these form link pieces
of evidence to indicate that there was a bona fide intention to use. The applicant has no evidence to prove that the respondent had no bona fide
intention. As observed by the Hon'ble Supreme Court, businesses cannot be started overnight.
The respondent's objections have to be rejected since if nothing else, the appellant's company name had become Royal Orchid Hotels Limited in
1997 pursuant to a resolution dated 1996. The respondent, who claims user only from January, 1997 cannot plead that the appellant was imitating their
name. When the mark is considered in its entirety, we are of the opinion that the ""Royal Orchid Hotels Private Limited"" and the ""Orchid"" cannot be
confused. Further the respondent's Orchid label is with the depiction of flower. The class of customers is of the high income group and there is no
likelihood of confusion especially in the instant case where the mark relates to service. Even if the mark related to goods bought off the shelf, we
doubt if, the word ""Orchid"" and the ""Royal Orchid"" will cause confusion. We are not concerned with consumer goods but with services rendered in the
hotel industry. Therefore both on the ground of honesty of adoption and likelihood of confusion, we are of the opinion that the impugned order must be
set aside and it is set aside. These appeals are allowed and both the marks are directed to proceed to registration. No costs. Consequently, the
connected M.Ps are closed.