Litigation over the ‘orchid’ trademark between Kamat Hotels and The Royal Orchid Hotels (‘ROH’) continues. This dispute has been covered by Prashant here and here. After losing at the IPAB, Kamat Hotels filed two writ petitions before the Madras HC. Without using flowery words, the Madras HC dismissed these petitions.
Though this was a ‘writ petition’ filed under Article 226, it reads more like an appeal. As we know, Article 226 is an extraordinary remedy intended to be applied in exceptional cases where ordinary legal remedies are not adequate. Also, a court dealing with a writ petition is not entitled to act as an appellate court. It is also well established that a writ of certiorari can be issued to a tribunal only on limited grounds: want or excess of jurisdiction, disregard of principles of natural justice or if there was an error apparent on the face of the record. The petitioner did not raise any of these grounds and it seems as if they were treating this petition more like an appeal.
So far three forums have heard this matter (see here):
- The Trade Mark Opposition Registry (where Kamat’s opposition succeeded);
- Two IPAB orders (an appeal by ROH against the Deputy Registrar’s order and a rectification application filed by Kamat; both were decided in ROH’s favour) and
- Bombay High Court (infringement and passing off action initiated by Kamat, where an interim injunction restraining ROH from using ‘orchid’ for new hotels was passed)
The Madras HC is now the fourth forum. The petitioner (Kamat Hotels) sought to set aside the IPAB’s order of 2011 that dismissed its rectification application.
Contentions and Decision
Briefly, Kamat Hotels adopted the mark ‘The Orchid’ in relational to hotels and hospitality services and began commercially using the same in 1997. They soon found out that the respondent (ROH) had started using the mark ‘Royal Orchid’ and ‘Royal Orchid Hotels’ for similar services. ROH obtained registration for its mark under class 16. This was challenged by the petitioner in its rectification application.
The petitioner claimed to be the prior user of this mark and alleged that respondent had dishonestly used and adopted a similar mark. They alleged that the two marks are likely to cause confusion since the word Orchid occurs in both the names. Also, the use of descriptive words such as ‘Royal’ and ‘Hotels’, in the respondent’s mark, does not make it distinct. Lastly, it was contended that the respondent has no bonafide intention to use the mark. For all these reasons the respondent’s mark should be rectified.
ROH denied all these allegations. The IPAB examined various documents to come to the conclusion that ROH was the prior user of the mark ‘Orchid’ and not Kamat Hotels. Evidence showed that ROH used the mark ‘Orchid’ since early 1990s with respect to banquet halls. Also, in 1996 they decided to adopt the name ‘Royal Orchid Hotels’ and filed an application before the Registrar of Companies, which was accepted. This showed that ROH could not have dishonestly adopted the mark. Moreover, the rectification application was found to be premature as it was filed before the lapse of 5 years from registration of ROH’s mark. On similarity and likelihood of confusion, the IPAB assessed the marks as a whole, in light of the nature of goods and class of customers and came to the conclusion that they were not deceptively similar.
Before the Madras HC, the petitioner put forth similar arguments. Predictably, the Madras HC upheld the IPAB’s order. On prior user, the court noted that the IPAB had gone through several documents that showed that the respondent had been using the mark ‘Orchid’ since the year 1990 and that the petitioner started using the said mark only in 1997. Therefore, the petitioner clearly was not the prior user.
On likelihood of confusion too, the court said “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.”
As is evident, there were no arguments made on inadequacy of the remedy available (i.e. the IPAB) or on legal infirmities of the IPAB order.