PRABHA SRIDEVAN,CHAIRMAN - (1.) THESE appeals are directed against the dismissal of application No.1291697(O.A.No.74 of 2003) and application No.1291696 (O.A.No.75 of 2003) of Royal Orchid Hotels Limited both the marks being word per se in respect of the services in class 42. The applications were made on 22.6.2004, the user claim was from 3.11.1999. The marks were advertised before acceptance in the journal on 15.6.2005. Notice of opposition was filed on 12.1.2006. After completion of filing of pleadings and evidences, both the opposition proceedings were heard on 12.6.2009. The Deputy Registrar found that the marks were not registrable since the only registrable feature in the marks was the word 'Orchid', which was identical to the opponent's trade mark and held that the opponent's mark was very well known and highly distinctive and that adoption of the marks by the appellants was dishonest. On these groundsinter alia, these applications were dismissed and hence both these appeals have been filed.
(2.) THE pleadings are almost identical in both the matters. In the notice of opposition the respondent contended that they are established providers of service such as hotels, restaurants, catering etc. They had been continuously using the trade mark since 1st January, 1997. In respect of their services and goods they have been giving wide publicity and have spent lakhs of rupees in publicity and on sales promotion. Their marks are immensely popular and they have made applications for registration of the mark in several classes, the details of which are given in the annexure. According to the respondent the appellants impugned trade marks contains the word "orchid" as the leading and essential feature which is identical with the respondent's trade mark "orchid". The applicants have merely added the descriptive word "Royal" and "Hotels Limited" which are really not relevant. The respondent's mark is well known, the applicants should have conducted a market survey before applying for registration. The adoption is dishonest. The claim of user from 3.11.1999 was denied. On these grounds they opposed the registration.
(3.) IN the counter statement the appellants/applicants submitted that the opposition was not maintainable, since the applicants were the prior adopter and using of the mark in relation to hotel business for more than 20 years and they are the prior conceiver and adopter of the mark. The applicant M/s. Royal Orchid Hotels Limited was established in 1986 as "Universal Resorts Limited". They had spent considerable amount in advertising and promoting the marks. The applicants right in the trade mark "Royal Orchid" and "Royal Orchid Hotels" are recognized by the trade mark registry, which has granted registration of the said mark. The applicant denied the user claimed by the opponent and their proprietary right. The applicant had been using the mark for 20 years at least from 1997 prior to the opening of the respondent's hotel. Steps are being taken to amend the statement of user in the subject matter application. The applicant's marks are prima facie distinctive. The respondent cannot claim exclusive right to the word Orchid'. Both the parties filed evidence to show user.;