Back
2017 Supreme(SC) 1188
SUPREME COURT OF INDIA
RANJAN GOGOI, R. BANUMATHI, JJ.
Royal Orchid Hotels Ltd. - Petitioner
Versus
Kamat Hotels (India) Ltd. & Ors. - Respondents
Special Leave Petition (C) No. 6131 of 2015
Decided On : 14-12-2017
IMPORTANT POINT
A prior user has the right over the trademark/logo.
Registration in one class will not foreclose consideration and refusal of registration in another class.
Reversal of a well considered judgment by a summary order cannot be sustained.
Headnote:(a) Intellectual Property Rights – Respondent getting the trademark 'Orchid' registered in 2007 in class 42 – Petitioner applying in 2004 for registration of trademarks 'Royal Orchid' and ‘Royal Orchid Hotels’ in class 42 – Dy. Registrar refusing application in 2009 holding that mark/logo 'Orchid' was being used by the respondent No.1 from an anterior date – High Court affirming – No error. (Para 5, 10)
(b) Intellectual Property Rights – Petitioner getting the trademarks registered in class 16 and the registration attaining finality – Petitioner again seeking registration of trademark/logo in class 42 – Refused by Dy. Registrar and affirmed by High Court – Held registration in class did not foreclose consideration and refusal of registration in class 42. (Para 11, 13)
(c) Administration of justice – Authority if first instance refusing registration on detailed consideration of materials on record – First appellate authority reversing the same by summary consideration – Not proper – High Court on detailed re-appreciation of materials on record affirming Authority’s order – Cannot be faulted. (Para 15)
Facts of the case:
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 which dismissed the challenge on 04.10.2011. The respondent No.1 approached the High Court which was dismissed. The special leave petition against the order of the High Court was also dismissed. The dispute with regard to registration of the trademarks 'Royal Orchid' and Royal Orchid Hotels in class 16, therefore, has attained finality in law.
The petitioner sometime in the year 2004 applied for registration of its aforesaid trademarks in class 42. This was refused by the Deputy Registrar of the Trademarks. In appeal, the IPAB set aside the order of the Deputy Registrar and allowed the registration of the petitioner's trademark in class 42.
The respondent No.1 filed a writ petition which has been allowed by the impugned order.
Finding of the Court:
There is no error in the impugned judgment.
Result: SLP dismissed.
JUDGMENT :
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. 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 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 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 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 t
