N. Paul Vasanthakumar, C.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 petitioner’s 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 petitioner’s 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 “In