In a decision dated 18th June, 2013 a bench of the Intellectual Property Appellate Board (IPAB), has allowed the appeals filed by Royal Orchid Hotel Ltd. (ROHL), against the decision of the Deputy Registrar of Trademarks, to allow the oppositions filed by the Kamat Group to two trademark applications for the marks ‘Royal Orchid Hotel’ & ‘Royal Orchid’ in Class 42 i.e. the category of services. The order can be accessed over here.
The winning party was represented by M.S. Bharath, Partner at Anand and Anand.
The Deputy Registrar of Trademarks who had allowed the initial oppositions, against Royal Orchid, back in June, 2009 was none other than Mrs. N.D.Kasturi, who was later arrested by the CBI on charges of massive corruption. We had covered her arrest over here. 
This specific decision of the IPAB is not all that surprising since the IPAB, in a related rectification filed by the Kamat Group against other trademarks of ROHL, had made observations, which completely contradicted Kasturi’s conclusions in the oppositions which were under appeal in the present case. We had written a detailed post on both those decisions over here.
At the time, in 2011, Justice Chandrachud of the Bombay High Court had passed a detailed order, in a lawsuit filed by the Kamat Group, restraining ROHL from opening any new hotels with the ‘Orchid’ trademark since, the Kamat Group had a trademark registration for ‘Orchid’ in Class 42. At the time the Kamat Group had claimed to be prior user of the mark, dating back to 1997. In the present appeal, IPAB had accepted evidence from ROHL that it had adopted the name Royal Orchid Hotel Ltd. in 1996 itself through a board resolution. These findings were similar to those made by the IPAB in 2011, in the case of the prior rectification petitions filed by the Kamat Group against ROHL.
I wonder why the IPAB did not just club these cases together at the time and dispose all of them together instead of holding similar proceeding 2 years apart. The IPAB could possibly try better docket management practices in the future.
With the present decision of the IPAB, ROHL should be able to get the Bombay High Court to modify or vacate its earlier injunction restraining it from using the ‘Orchid’ mark.
It has been a rather long battle for ROHL and let’s not forget that the Kamat Group still has registrations for the ‘Orchid’ mark in Class 42. Would you be confused between two hotels named the ‘Royal Orchid’ and ‘Orchid’?
The IPAB doesn’t seem to think so. In its concluding paragraph the Board remarks “When the mark is considered in its entirety, we are of the opinion that the “Royal Orchid Hotels Private Limited” and the “Orchid” cannot be confused. Further the respondent’s Orchid label is with the depiction of flower. The class of customers is of the high income group and there is no likelihood of confusion especially in the instant case where the mark relates to service. Even if the mark related to goods bought off the shelf, we doubt if, the word “Orchid” and the “Royal Orchid” will cause confusion. We are not concerned with consumer goods but with services rendered in the hotel industry. Therefore both on the ground of honesty of adoption and likelihood of confusion, we are of the opinion that the impugned order must be set aside and it is set aside.”
In effect, the IPAB has virtually shut the door on further litigation between both parties – it is unlikely any court will contradict a specialist tribunal’s conclusion on the lack of confusion between both the marks. This just means that both parties will have to sit across the table and sort out their differences by themselves.
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