Madras High Court
Kamat Hotels (India) Limited vs Royal Orchid Hotels Limited on 7 February, 2014
Bench: R.K. Agrawal, N. Paul Vasanthakumar
IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED : 07..02..2014 C O R A M The Honourable Mr. R.K. AGRAWAL, CHIEF JUSTICE and The Honourable Mr. Justice N. PAUL VASANTHAKUMAR Writ Petition Nos.26544 and 26545 of 2011 Kamat Hotels (India) Limited, Having its Registered Office at Nehru Road, Ville Parle (E), Mumbai-400 099. .. Petitioner in both the W.Ps. versus 1.Royal Orchid Hotels Limited, No.11, Venkataswamy Naidu Road, Shivajinagar, Bangalore-560 051. 2. The Deputy Registrar of Trade Marks, Trade Marks Registry, IPR Building, Industrial Estate, SIDCO RMD Godown Road, Near Eagle Flask Factory, G.S.T. Road, Guindy, Chennai-32. 3. The Intellectual Property Appellate Board, Annex I, 2nd Floor, Guna Complex, 443, Anna Salai, Teynampet, Chennai-18. ..Respondents inboth the W.Ps. - - - - - Prayer : Petitions filed under Article 226 of the Constitution of India for issuance of writs of certiorarified mandamus to call for the records relating to the orders of the Intellectual Property Appellate Board dated 4.10.2011 made in ORA/216/2008/TM/CH and ORA/217/2008/TM/CH respectively and set aside the same. - - - - - For Petitioner ::Mr. P.S. Raman, Senior Counsel for M/s. A.A. Mohan For Respondent-1 :: Mr. M.S. Bharath - - - - - O R D E R
(The Honble the Chief Justice & N. Paul Vasanthakumar, J.) Both these writ petitions have been filed challenging the orders passed by the Intellectual Property Appellate Board (hereinafter referred to as the Board), by which the Board dismissed the rectification applications filed under Section 57 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) for removal of the trademarks Royal Orchid and Royal Orchid Hotel filed by the petitioner herein, which is the owner and proprietor of the trademark The Orchid.
2. The facts of the case are briefly stated hereunder :-
According to the petitioner, it has adopted the name THE ORCHID for use in relation to the name of its five star hotel, wherein they provide lodging, boarding, restaurant, food, catering and the like hospitality services. The petitioner commenced its commercial operations in a phased manner from January, 1997 under the trademark THE ORCHID and is putting it to use continuously, openly and uninterruptedly. According to the petitioner, it is the prior adopter, user and proprietor of the said trademark. The leading, essential and prominent feature in the trademark THE ORCHID is the word ORCHID and the trade and the public refer to the petitioners hotel in common parlance only as ORCHID. The petitioner states that its hotel THE ORCHID is the first ECOTEL hotel in Asia and the said trademark has acquired immense goodwill and reputation and is associated with the petitioner for its hospitality services offered. The petitioner is the registered proprietor of the trademark THE ORCHID under several registration numbers and has several other applications pending registration under various classes before the authorities concerned for the trademark THE ORCHID/ORCHID. The petitioner has also registered its trademark ORCHID on the world wide web, holding a fully functional and operative website www.orchidhotel.com. The petitioners hotel has been bestowed with 78 international and national awards and various different certificates of merit from prestigious institutions in the hospitality industry. On account of the huge and voluminous business and extensive publicity, the trademark THE ORCHID/ORCHID is recognised as a well known one in the hotel and hospitality industry and well received by the trade, public and general masses associated exclusively with the petitioner and none else. Thus, the said trademark has lost its primary significance and has acquired a secondary meaning, relating to the services offered by the petitioner and the trademark THE ORCHID is today recognised as a well known trade within the meaning of the provisions of Section 2(1)(zg) of the Act.
3. It is submitted that in November, 2005, the petitioner came to know about two other applications filed by the first respondent for registration of the trademarks ROYAL ORCHID and ROYAL ORCHID HOTELS in respect of services relating to providing food and drink, temporary accommodation, medical, hygenic and beauty care amongst others in Class-42, through an advertisement appearing in the Trade Marks Journal No.1331 (S-1) dated 15.6.2005, which journal was made available to the public only on 28.10.2005. The petitioner immediately filed the notice of opposition against the said registration. The Registrar dismissed both the applications filed by the first respondent holding that the rival marks are deceptively similar/same; the first respondent has not used the mark earlier; the first respondent is inconsistent in its claim of usage; no use of the marks by the first respondent has been proved prior to user thereof by the petitioner in respect of Hotel services and the adoption of the impugned mark ROYAL ORCHID by the first respondent is dishonest. The learned Registrar has further held that the petitioner is the prior adopter of the mark THE ORCHID and it is a well known trademark.
4. While so, it is the case of the petitioner that it was shocked to learn in or about May, 2008 that in August, 2007 edition of the magazine Industry Insight Indian Hotel Industry published by Cygnus Business Consulting & Research P. Ltd., the first respondent has published its profile, wherein it is mentioned that the petitioners hotel The Orchid is owned by the first respondent; the address of its registered office was mentioned as the address of the first respondent; and the names of the Directors of the petitioner were mentioned as Directors of the first respondent. As against the same, the petitioner filed a suit in O.S. No.2224 of 2008 in the Bombay High Court, which by order dated 5.4.2011, made absolute the interim injunction granted against the first respondent, restraining them from opening any new hotels under the impugned trademark ROYAL ORCHID and held that the first respondent has not even proved prima face case in its favour as regards its claim of prior use of the mark ORCHID/ORCHIDS since 1992 and has categorically held that there has been no continuous use of the trademark ORCHID by the first respondent. In the appeal filed against the said order, a Division Bench of the Bombay High Court in Appeal No.288 of 2011 has by order dated 6.5.2011 stayed the operation of the order passed by the trial court, varying its order only to the limited extent of permitting the first respondent to open its ROYAL ORCHID Hotel proposed to be opened in Vadodara. Thus, till date, the injunction order restraining the first respondent from using the impugned mark ROYAL ORCHID on any of its new hotel ventures continues to be in operation.
5. It is submitted that the first respondent obtained registration of the trademarks ROYAL ORCHID and ROYAL ORCHID HOTELS in respect of paper and paper articles, printed matters, newspaper and periodicals and stationery which they purportedly claim to have been using since 3.11.1999. The goods for which the impugned mark stands registered are neither used by the first respondent till date nor there is any bona fide intention for the first respondent to use the impugned mark. It is submitted that the registered mark ROYAL ORCHID HOTELS is confusingly similar to the trademark THE ORCHID/ORCHID of the petitioner and the first respondent has claimed no exclusive right to the word HOTELS, which has been agreed to be disclaimed. Even otherwise, the word ROYAL is a descriptive word which cannot be monopolized. Thus, the only registrable feature in the impugned mark is the word ORCHID which is identical and is closely similar to the petitioners well known trademark THE ORCHID/ORCHID. On 30.5.1997, the petitioner had applied for registration of the trademark THE ORCHID in respect of the aforementioned goods, which is awaited. However, despite the petitioners application being prior in time, the impugned mark which is deceptively similar to the prior used and applied mark of the petitioner has wrongly proceeded with the registration under a false claim of use. The petitioner filed rectification petition against the said registration, wherein the first respondent filed petitions for taking on record additional documents and for clubbing of hearing with the rectification petitions and appeals filed by the first respondent against the petitioners registration. The Board, vide order dated 3.7.2011, directed that the admissibility of the additional documents shall be taken up along with the main case. However, the Board refused clubbing of the petitioners rectification applications and the appeals filed by the first respondent.
6. The respondents, on the other hand, contend that Royal Orchid Hotels Limited was incorporated on 3.1.1986 under the name Universal Resorts Limited and has been in business ever since its inception. According to them, their predecessor-in-title Baljees Hotels & Real Estate Pvt. Ltd., originally conceived, adopted and commenced use of the mark ORCHID in the year 1990 in respect of its banquet hall in Hotel ROYAL ORCHID HARSHA (then known as Hotel Harsha) in Bangalore. An advertisement for the ORCHID ROOM in the Sunday Times of India on 30.12.1990 is ample evidence for such adoption and use. The said hall was earlier known as Chamundi, which was renamed as ORCHID ROOM after renovation, and the renaming of the Banquet Hall from Chamundi to ORCHID ROOM has also been documented in the newsletter, Open House. Thus, it is stated that the said mark ORCHID was adopted and publicly used by the respondent as early as December, 1990, which is much prior to the petitioners alleged date of adoption of the march ORCHID, that is in the year 1997. In 1992-93, the predecessors of the first respondent adopted the mark ORCHIDS in relation to cutlery goods and outdoor catering services. The adoption and use of the mark ORCHID by the first respondent since 1990 is open, prominent and public. The marks ORCHID and/or ORCHIDS have been used by the first respondent on printed material, stationery etc. since 1990 and the mark ROYAL ORCHID for various goods and services, inter alia, banqueting, catering and hoteliering and hospitality services since 1996. It is stated that in or about 1996, the first respondent-company changed its name to ROYAL ORCHID HOTELS LIMITED, as part of a process of expansion of business under the mark ORCHID, after due search and confirmation of the name ROYAL ORCHID by the Registrar of Companies on 25.4.1996. On 10.4.1997, the Registrar of Companies issued a Fresh Certificate of Incorporation consequent on change of name, wherein it is reflected that the name of the first respondent had changed from Universal Resorts Limited to Royal Orchid Hotels Limited and a fresh Certificate of Incorporation was issued on the said date. The first respondent is the registered proprietor/applicant of various trademarks such as Royal Orchid Hotels, Royal Orchid, Royal Orchid Central, Royal Orchid Hotels, Royal Orchid Metropole, Royal Orchid Harsha and Hotel Royal Orchid.
7. It is the case of the respondents that the first respondent has been using the marks ever since 1990 and its presence was on a substantial scale ever since 1990. The services rendered by the first respondent under the aforesaid marks were being availed by consuming public and foreign patrons from various countries and hence, the petitioner cannot claim to be ignorant of the same and is deemed to be aware about its existence since 1990. Despite notice of the use of the mark by the first respondent in the hospitality industry, the petitioner adopted and commenced use of the mark ORCHID, which cannot be regarded as honest or in good faith. This signifies a clear instance of the petitioner acquiescing in the use of the marks containing the word ORCHID by the first respondent. Therefore, the rectification petitions filed by the petitioner were rightly rejected by the Board. In addition, the first respondent has preferred appeals against the refusal of their trademark ROYAL ORCHID in Class 42 services and they are pending. The first respondent has also filed rectification petitions against the petitioners marks to rectify the similarity in their mark to their trademark ROYAL ORCHID. According to the respondent, the averment that the petitioner conceived and adopted the name ORCHID in 1995 and that the mark has been continuously used since 1997 in relation to the five star hotel is far from truth as the petitioners own website advertises that the petitioners hotel THE ORCHID was allegedly partially opened to the public on 27.9.1997. It is the petitioners own case in the writ petition that the said mark has been used by them interruptedly ever since its alleged adoption in the year 1995. It remains a fact that it was the first respondent which had bona fide adopted the trademark ORCHID as early as 1990 and the mark ROYAL ORCHID since 1996 when no other entity was using the said names. If at all, the petitioners hotel is known as THE ORCHID ECOTEL HOTEL and the said mark must be taken as a whole, and using the word ORCHID as leading, prominent and essential feature would result in creating a monopoly on the word ORCHID which goes to create a bad precedent that the petitioner can per se claim right over the said mark. According to the respondents, the petitioner cannot dissect the impugned mark into ROYAL and ORCHID separately and hold ROYAL per se not registerable and the word ORCHID as being identical to the opponents mark, as it is contrary to well established principles of trademark law to dissect the mark as opposed to considering the mark as a whole. It is submitted that by dissecting the mark and holding ORCHID as being leading, prominent and essential feature of their mark, the petitioner is trying to create a monopoly on the word ORCHID. It is the case of the first respondent that the marks ROYAL ORCHID and ORCHID are different when taken and compared as a whole. But the petitioner is trying to make out a case that they are only proprietors of the mark ORCHID, while failing to take note of the fact that the word ORCHID per se is commonly used in various industries including hotels like RESIDENCY, PARK, PALACE, GRAND etc. It is submitted that any amount of use of the word ORCHID cannot confer any exclusive right on any one unless they use the word with some added distinctive features. It is stated that the adoption of the mark by the petitioner is not only subsequent to that of the first respondent, but it is also tainted with dishonesty.
8. After hearing the parties at length, the Board by a detailed order dated 4.10.2011 dismissed the rectification petition filed by the petitioner against the registration granted in respect of the respondents mark. As far as the question whether the rectification applications were premature, the Board held as per Section 47(1)(b) of the Act, any registered trade mark may be taken off the register in respect of the goods for which it is registered, if it has not been put to use for a continuous period of five years from the date on which it has been entered on the register. Since in this case the Certificate of Registration has been issued on 19.5.2005 and the rectification application has been filed on 22.9.2008, i.e. within three years time, whereas the applicant ought to have waited till 2010 to file the applications. Therefore, the applications were held to be premature and not maintainable. As regards the bona fide intention not to use the mark in relation to those goods or services for which it has been obtained and in fact there was no bona fide use of the mark for three months before the date of the application, the Board held that the petitioner had not discharged the onus and no evidence was filed to prove that the petitioner had no intention to use the mark, whereas this onus has been discharged by the respondent and the pleadings in the civil suit is a tacit admission of use. The Board also held that the adoption of the name of the company as the trademark by the respondent cannot be said to be dishonest as that is the name of their business which was registered way back in the year 1996. It was accordingly held that considering the nature of the goods, the place where the goods will be provided and the class of customers to which the goods will be given, the marks ROYAL ORCHIDS or ROYAL ORCHIDS HOTEL was not confusing or deceptively similar to Orchid. Aggrieved by the said order, the petitioner has filed the present writ petitions.
9. The petitioner has filed before this Court, all the documents which were filed by the respective parties before the Board, in four massive volumes of Typed Sets.
10. Mr. P.S. Raman, learned senior counsel appearing on behalf of the petitioner submitted that the petitioner-company is the rightful owner, prior user and lawful proprietor of the trademark ORCHID/THE ORCHID when used in relation to hotel services and the adoption and filing of the deceptively similar mark ROYAL ORCHID by the first respondent in relation to paper and paper articles, printed matters, newspaper and periodicals and stationery is much subsequent to the adoption and filing of application in the said class by the petitioner. Moreover, there is no use of the impugned mark undertaken by the first respondent in relation to any goods of the said class either since 1999 or at any point of time at all. He submitted that the petitioner is the prior adopter, registered proprietor and prior user of the trademark THE ORCHID/ORCHID since 1995 and has been using the same continuously and extensively since 1997, and thus it has the proprietory rights by virtue of prior adoption, registration and use. According to him, Section 47(1)(b) of the Act was never pleaded in the application and hence, the Board ought not have taken up the issue, that too as a preliminary issue, to hold that the application was premature, especially when it was never pleaded or argued before it. Learned senior counsel submitted that the Board erred in holding that the onus of proving lack of bona fide intention to use is heavy on the petitioner, whereas the onus to prove non-use lay heavily on the first respondent in relation to the category of goods in which the mark is sought to be used. He added that the finding of the Board that the adoption of the name of the respondents company as its trademark for the goods to be used in the course of hotel business cannot be said to be dishonest was erroneous inasmuch as it was not deciding a rectification application pertaining to use of the impugned mark in relation to hotel services, but was only considering its use in relation to class 16 goods. It was submitted by the learned senior counsel that the Board failed to appreciate the fact that there has been continuous use of the impugned mark ROYAL ORCHID/ROYAL ORCHID HOTELS even in respect of hotel and hospitality service since 1992 by the petitioner, whereas the first respondent has not proved continuous use of the impugned marks. Further, the fact that the first respondent had never used the impugned mark till date nor had the intention to use the same in respect of class 16 goods was lost sight of by the Board. According to the learned senior counsel, the petitioner is the prior adopter, user of the trade mark THE ORCHID/ORCHID, whereas the first respondent has never used the marks ROYAL ORCHID/ROYAL ORCHID HOTELS and it was launched only in 2001 and therefore, it is preposterous to allege that the first respondent had been using the mark since 1992, that too in respect of goods falling in Class-16.
11. Learned senior counsel has referred to the provisions of Sections 9, 11, 12, 18, 47 and 57 of the Act, as also to the documents contained at pages 124 and 161 of Volume-I and page 12 of Volume-II of the typed sets.
12. Mr. Bharath, learned counsel appearing for the first respondent submitted that his client has an extremely well established and flourishing business under the mark ROYAL ORCHID and presently operates 18 business and leisure hotels (5 Star to Heritage Classification) under the brand name ROYAL ORCHID in 11 cities across the country, creating a reputation that physically transcends territorial limits. The first respondent is also listed on the Stock Exchange and has built up a thriving business, as also an enormous goodwill and reputation in the said brand. The members of the trade and public associate and identify the brand/name ROYAL ORCHID only with the first respondent. He submitted that on account of the extremely high quality of services rendered by the first respondent under its well known brand name ROYAL ORCHID, it has received several awards in recognition of the same. The first respondents chain of hotels has in addition received substantial media attention for the high quality of services offered and several write-ups have appeared in prominent magazines/newspapers including Business Standard, India Today Travel Plus, Economic, Business Line etc. The first respondent has earned a considerable turnover and has spent enormous sums to advertise and promote its brand ROYAL ORCHID and thus it was able to place on record several documents before the Board to establish the fact that adoption and/or use of the mark ORCHID/ROYAL ORCHID by the first respondent through its predecessors pre-dates that of the petitioner. According to the learned counsel, the prior and continued use of the mark on printed matter and stationery and also in respect of hotel services by the first respondent is established beyond doubt and the petitioner failed to discharge its onus of proving non-use of the first respondents impugned registered marks. It is submitted that the petitioner had filed a civil suit before the Bombay High Court against the first respondent, wherein an order of injunction was granted and also made absolute with the clarification that the injunction so granted shall not operate in respect of hotels and businesses commenced prior to the date of the order, i.e. 5.4.2011. An appeal was filed against the said order and a Division Bench modified the order of the learned single Judge to the extent that the first respondent was granted relief to open a hotel. The learned counsel, therefore, submits that the order of the Board is perfectly valid and suffers no legal infirmity and calls for no interference by this Court.
13. Learned counsel for the first respondent has referred to the provisions of Sections 47, 57, 68, 77, 92 and 124 of the Act and also to the various documents filed at pages 17 to 23, 27 and 130 of Volume-I; pages 28, 31, 32, 34 to 36, 39, 52, 53, 61 to 69, 71 and 76 of Volume-II; page 20 of Volume-III; and pages 6 and 66 of Volume-IV of the Typed Sets in order to prove the prior user of the name by the first respondent.
14. We have heard the learned senior counsel for the petitioner and the learned counsel for the first respondent at length. We have perused the impugned order passed by the Intellectual Property Appellate Board and the relevant materials available on record in the form of typed set of papers.
15. Before adverting to the various pleas raised by the learned senior counsel appearing for the parties, we feel it appropriate to refer to the relevant provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act) which have been relied upon by the learned counsel for the parties.
16. Section 9 of the Act provides the circumstances under which registration of a trademark can be refused. It, inter alia, provides that where the trademark is devoid of any distinctive character, not capable of distinguishing the goods or services of one person from those of another person, or which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service or which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered. However, the proviso to sub-section (1) of Section 9 states that registration of a trademark shall not be refused if before the date of application for registration, it has acquired a distinctive character as a result of the use made of it or it is a well-known trademark. Sub-section (2) provides that a trademark shall not be registered as a trade mark if it is of such nature as to deceive the public or cause confusion; or it contains or comprises of any matter likely to hurt the religious susceptibilities of any class of section of the citizens of India; or it comprises or contains scandalous or obscene matter; or its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950. Under sub-section (3), it has been provided that a trademark shall not be registered as a trade mark if it consists exclusively if the shape of goods which results from the nature of the goods themselves; or the shape of good which is necessary to obtain a technical result; or the shape which gives substantial value of the goods. The explanation appended to Section 9 clarifies that the nature of goods or services in relation to which the trade mark is used or proposed to be used shall not be a ground for refusal of registration. Section 9, therefore, lists out the grounds for refusal of registration of any trade mark, as would be clear from the heading of Section 9.
17. However, Section 11 of the Act enumerates the relative grounds for refusal of registration. Under sub-section (1) of Section 11, a trade mark shall not be registered if because of its identity with an earlier trade mark and similarly of goods or services covered by the trade mark, or because of its similarity to an earlier trade mark and the identity or similarity of the goods of services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark. The provisions of sub-section (1) of Section 11 are, however, subject to the provisions made under Section 12 of the Act. Under sub-section (2) of Section 11, a trade mark which is identical with or similar to an earlier trade mark and which is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India, and use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark. Under sub-section (3), a trade mark shall not be registered if, or to the extent that its use in India is liable to be prevented by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course of trade, or by virtue of law of copyright. However, under sub-section (4), if the proprietor of the earlier trade mark or other earlier right consents to the registration, the Registrar has been empowered to register the mark under special circumstances under section 12. What is the meaning of the word earlier trademark has been given in the explanation to Section 11(4). However, under sub-section (5), it has been provided that a trade mark shall not be refused registration on the grounds specified in sub-section (2) and (3) of Section 11, unless an objection on any one or more of those grounds is raised in opposition proceedings by the proprietor of the earlier trade mark. Sub-section (6) empowers the Registrar to take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark, including certain conditions mentioned in the various sub-clauses of sub-section (6). Under sub-section (7), the Registrar shall is enjoined to take into account the number of actual or potential consumers of the goods or services, the number of persons involved in the channels of distribution of the goods or services, the business circles dealing with the goods or services to which that trade mark applies while determining as to whether a trade mark is known or recognized in a relevant section of the public for the purposes of sub-section (6). Sub-section (8) provides that if any Court or Registrar has determined that a particular trademark is well known in at least one relevant section of the public in India, the Registrar shall consider that trademark as a well known trademark for registration under this Act. Under sub-section (9), certain things mentioned in the various clauses are not to be taken as conditions by the Registrar for determining whether a trademark is a well-known trademark or not. Sub-section (11) protects the trademark acquired through use in good faith before the commencement of the Act. Section 18 of the Act deals with the procedure for making an application for registration.
18. Section 47(1) of the Act empowers the Registrar or the Appellate Board to remove from register, on imposition of limitations, a registration on grounds of non-use. Clause (a) of sub-section (1) provides for making of an application by an aggrieved person that the trade mark was registered without any bona fide intention on the part of the applicant for registration, that it should be used in relation to those goods or services by him, and there has been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to a date three months before the date of the application. Clause (b), however, provides that up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer should have elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof.
19. We may mention here that the learned senior counsel appearing for the petitioner had submitted that he has not raised the issue of removal of the trademark from the Register on the grounds mentioned in clause (b) of sub-section (1) of Section 47.
20. Section 57(1) of the Act empowers the Registrar and the Appellate Board to pass such orders as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto. Likewise, the Appellate Board and the Registrar have been empowered under sub-section (2) for making, expunging or varying the entry as it may think fit regarding absence or omission from the register of any entry, or any entry made in the register without sufficient cause, or any entry wrongly remaining on the register, or any error or defect in any entry in the register. The Appellate Board and the Registrar have been given very wide powers under sub-section (3) of Section 57 to decide the question that may be necessary or expedient in connection with the rectification of the register. Suo motu power can also be exercised in this behalf, but after giving notice and opportunity of hearing. Any order passed by the Appellate Board rectifying the register has to be complied with by the Registrar.
21. Section 68 of the Act empowers the removal of registration of a collective mark from the register on the ground that the manner in which the collective mark has been used by the proprietor or authorized user has caused it to become liable to mislead the public as a collective mark, or that the proprietor has failed to observe, or to secure the observance of the regulations governing the use of the mark. Explanation-I to the Section clarifies as to what authorised user means as a member of an association authorised to use the registered collective mark of the association. Explanation-II provides that it shall be deemed to be used by the registered proprietor thereof.
22. Section 77 of the Act provides for cancelling or varying the registration of a certified trademark. The Registrar has been empowered on an application made in the prescribed manner by an aggrieved person, and after giving an opportunity to the proprietor of opposing the application, to pass such orders as he thinks fit for expunging or varying any entry in the register to a certification trademark or for varying the regulations on the ground that the proprietor is no longer competent, in the case of any of the goods or services in respect of which the mark is registered, to certify those goods or services, or that the proprietor has failed to observe any provisions of the regulations to be observed on his part, or that it is no longer to the public advantage that if the mark remains registered, the regulations should be varied. Section 92 of the Act lays down the procedure and powers of the Appellate Board. The Appellate Board is not bound by the procedure laid down in the Code of Civil Procedure, 1908, but shall be guided by the principles of natural justice subject to such provisions of this Act and the rules made thereunder, and the Appellate Board shall have powers to regulate its own procedure, including the fixing of places and times of its hearing. The Appellate Board has also been conferred with the power vested in a civil court under the Code of Civil Procedure in respect of certain matters, and the proceedings before the Appellate Board are treated to be judicial proceedings within the meaning of Sections 193, 228 and 196 of the Indian Penal Code, 1860, and the Board shall be deemed to be a civil court for the purposes of Section 195 and Chapter XXVI of the Code of Criminal Procedure, 1973.
23. Section 124 of the Act provides that the proceedings in a suit for infringement of a trademark are liable to be stayed, where the defendant pleads that registration of the plaintiffs trade mark is invalid, or the defendant raises a defense under clause (e) of sub-section (2) of Section 30 and the plaintiff pleads the invalidity of registration of the defendants trade mark. The court trying the suit shall, if any proceedings for rectification of the register in relation to the plaintiffs or defendants trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings. However, if no such proceedings are pending and the court is relation to the plaintiffs or defendants trade mark is prima facie tenable, an issue regarding the same can be raised and the case adjourned for a period of three months from the date of the farming of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register. Certain other contingencies have also been provided in the said Section.
24. The main thrust of the arguments advanced by the learned senior counsel for the petitioner is that the first respondent is not the proprietor of the trademark in question; there was no prior user of the same; the trademark in question deceives the general public and causes confusion; and it is not distinctive as provided under Sections 18, 47(1)(a), 9(2(a), 9(1)(a) respectively and also is hit by Sections 11(2), 11(3) and 11(10) of the Act.
25. Reliance placed by the learned senior counsel for the petitioner on the Disclaimer Advertisement which appeared in the Trademarks Journal Issue dated 22.6.2004, claiming user of the trademarks Royal Orchid and Royal Orchid Hotels since 3.11.1999 (page 161 of the typed set Vol.I), in contra to the use of the word The Orchid by the petitioner, in its letter dated 28.12.1995 (page 124 of the typed set Vol.I) and also in paragraph 5 of the affidavit dated 30.1.2009 filed by the first respondent in Rectification Application No.217 of 2008 before the Intellectual Property Appellate Board, in which the claim of use of the mark Orchids in relation to cutleries since 1992 being contradictory and an after-thought is highly misplaced, for the reason that the first respondent has filed voluminous documents showing that they have been using the trademark Orchid since the year 1990 in respect of cutleries. Even according to the own showing of the petitioner, they had started using the trademark Orchid only since January, 1997 and not before that and therefore, the petitioner cannot be said to be the prior user of the said trademark.
26. The first respondent filed voluminous documents before the Board to show that they had been using the word Orchid since the year 1990. The documents filed in Typed Set of Papers Vol.I found at pages 4, 28, 31, 32, 34, 35, 36, 39, 52, 53 are copies of various issues of the Newsletter Open House published by Harsha Hotel and Convention Centre, the predecessor of the respondent. Similarly, the documents filed at pages 61 to 67 are letters addressed by various firms to the petitioner acknowledging receipt of the aforesaid Newsletters. At pages 68 and 69 is copy of Form No.23 pertaining to Registration of Resolutions and Agreements, showing the company name Royal Orchid Hotels Ltd. Likewise, at page 70 is found the Notice regarding the Annual General Meeting of the company, containing a resolution of the change of the company name as Royal Orchid Hotels Ltd.. The application form for change of the name of the company to Royal Orchid Hotels Ltd. is found at page 71 and the Certificate of Incorporation consequent to the change of name is found at page 76.
27. The first respondent has also filed copies of Advertisements and Certificates of Registration of Trademark reflecting their use of the trademark The Orchid at pages 17, 18, 19 to 23, 27 and 130 in Typed Set of Papers Vol.II, as also the paper cutting from the Sunday Times of India, Bangalore Edition dated 30.12.1990 containing the advertisement carrying out their trademark found at page 6 of Typed Set of Papers Vol.IV, which also contains at page 66, an affidavit filed by the petitioner in the High Court of Bombay in Notice of Motion No.2552 of 2008 in Suit No.2224 of 2008, from which the use of the trademark Royal Orchid Hotels Limited is evident. In this Notice of Motion, the Bombay High Court granted an order of injunction in favour of the petitioner insofar as the same would not operate in respect of hotels and business which have already commenced prior to the date of the said order, i.e. 5.4.2011. The order of injunction restrained the first respondent from making any infringement in respect of any new hotel or new line of business to be set up after the said judgment. In other words, the judgment did not prohibit the first respondent from carrying on any business in the name of the trademark in question, of which it is a prior user.
28. The circumstances under which the first respondent has come to use the word Royal Orchid have been set out in great detail by the respondents through various documents filed by them and which have been accepted by the Appellate Board. The submission of the petitioner that the first respondent was not the prior user of the trademark Royal Orchid cannot be sustained by any figment of imagination, since the petitioner claims to be the prior user of the said trademark only from the year 1997, whereas from the documents filed on behalf of the first respondent, it has been clearly established beyond any reasonable doubt that the first respondent has been using the said trademark since 1990 onwards.
29. There is no question of non-user of the trademark by the first respondent, or the trademark becoming distinctive in character in relation to its use by the petitioner, or in the first respondent deceiving the general public and causing confusion by using the said trademark. The name Royal Orchid registered in the name of the first respondent does not in any way cause confusion with the name Orchid, as claimed by the petitioner. Even accepting the argument advanced on behalf of the petitioner insofar as the grant of injunction order passed by the Bombay High Court, suffice it mention that in view of the provisions of Section 124 of the Act, the proceedings before the Bombay High Court are liable to be stayed during the pendency of the proceedings before the Appellate Board and therefore, the petitioner cannot take any advantage of the same and the order of the Bombay High Court will not come to the rescue of the petitioner.
30. In the light of the view taken by us on the facts of this case, we feel it is not necessary to refer to the various case laws cited on behalf of either side.
31. In view of the foregoing discussions, we are of the considered opinion that the order passed by the Intellectual Property Appellate Board dated 4.10.2011 does not suffer from any legal infirmity or any error apparent on the face of the record so as to warrant any interference by this Court. However, we may mention here that any observations made by this Court in this judgment would not in any way have any effect on the appeals pending before the Appellate Board or any decision taken therein.
32. In the result, both the writ petitions fail and are accordingly dismissed. However, there shall be no order as to costs. Consequently, the connected miscellaneous petitions are closed.
(R.K.A., C.J.) (N.P.V., J.)
7th February, 2014
Index: Yes
Internet: Yes
ab
To
1. The Deputy Registrar of Trade Marks,
Trade Marks Registry,
IPR Building, Industrial Estate,
SIDCO RMD Godown Road,
Near Eagle Flask Factory,
G.S.T. Road, Guindy, Chennai-32.
2. The Intellectual Property Appellate Board,
Annex I, 2nd Floor, Guna Complex,
443, Anna Salai, Teynampet, Chennai-18.
The Honble the Chief Justice
and
N. Paul Vasanthakumar, J.
ab
Pre-Delivery Order in
W.P. Nos.26544 & 26545 of 2011
Delivered on
07..02..2014