The court established that the Defendant failed to prove continuous prior use and the Plaintiff did not acquiesce to the Defendant's use of the mark, leading to the grant of an injunction.

(DR.D.Y. CHANDRACHUD, J.)

1. The suit has been instituted for infringement and passing off. The Plaintiff carries on the business of conducting hotels and restaurants and has a food catering business. The Plaintiff is the owner and proprietor of the trade mark the Orchid which is used upon and in relation to a Five Star hotel belonging to the Plaintiff. The essential and prominent feature of the mark is the word Orchid. According to the Plaintiff in or around December 1995, it conceived and adopted the mark from the name of a flower for use upon and in relation to its hotel which was then under construction at Mumbai. The construction of the first phase of the hotel was complete in 1996. Commercial operations commenced in phases from January 1997. Hence, the Plaintiff claims use of the mark continuously since January 1997. The hotel, which is called The Orchid is stated to be the first Ecotel hotel in Asia. The word Ecotel is recognized as a hallmark of environmentally sensitive hotels. Authority to use the mark Ecotel is a culmination of a certification programme undertaken to enable industries in the hospitality area to enhance their value through environmental initiatives. The work mark The Orchid has according to the Plaintiff acquired goodwill and reputation both in the city of Mumbai and elsewhere. Apart from claiming common law rights in the mark as a result of continuous use since January 1997, the Plaintiff has also claimed an entitlement as a proprietor of the mark under the provisions of the Trade Marks Act 1999.

2. Prior to the statutory recognition of service marks in 2003 the Plaintiff, in the manner, the Court is informed, that was then prevalent obtained registration of the mark in various classes under the Act. On 30 May 1997 the Plaintiff obtained registration of the mark in Class 16 which inter alia relates to paper and stationary. Registration was obtained also on 30 May 1997 in relation to Class 29 (food items), Class 30 (coffee, tea and sugar), Class 31 (agricultural, horticultural and forestry products) Class 32 (beer, mineral and aerated water) and Class 33 (wines and spirits). After service marks came to be statutorily recognized, the Plaintiff applied for the registration of its mark in Class 42 (hotels, bar and restaurants, catering, holiday camp services, hotel reservations, providing of food and drinks and temporary accommodation). Registration was granted to the Plaintiff on 17 September 2007. The registration relates back to 19 May 2004.

3. The case of the Plaintiff that the mark has been utilized since 1 January 1997 is buttressed by a certificate of a Chartered Accountant. Revenues for the period from 1 January 1997 to 31 December 1998 were Rs.18.72 Crores. The revenues rose to Rs.96.27 Crores for the financial year 2007-08. Publicity expenses for the period 1 January 1997 to 31 December 1998 were Rs.67.05 lacs which increased, during the financial year 2007-08 to Rs.2.91 Crores. Invoices for the advertisements issued have been relied upon by the Plaintiff. The Plaintiff has placed reliance on certificates and awards which demonstrate a commitment to quality in the hospitality industry. An Ecotel certificate was issued to the Plaintiff on 12 May 1997.

4. Some time in March 2004 the Plaintiff claims to have learnt that the Defendant had applied for registration of two trade marks, Royal Orchid and Royal Orchid Hotels in Class 16, for paper and paper articles and other stationary goods. In November 2005, the Plaintiff claims to have learnt of an application by the First Defendant for the registration of these two marks in Class 42. The First Defendant had submitted an application on 22 June 2004, which was advertised in the Trade marks Journal of 15 June 2005 which according to the Plaintiff was available to the public on 20 October 2005. The First Defendant had in its application claimed use from 3 November 1999. The application of the First Defendant was rejected on 29 June 2009. A