The Delhi High Court has dismissed two appeals filed by Haveli Restaurant and Resorts Ltd. challenging the registration of the trademarks ‘AMRITSAR HAVELI’ and ‘THE AMRITSAR HAVELI’ for Class 43. Justice Tejas Karia held that the appellant cannot claim exclusive rights over the word “HAVELI”, noting that it is ‘generic in nature and common to the trade’ and there is no deceptive similarity between the Appellant’s Marks and the marks that are challenged.
The dispute began when Respondent No. 2 applied to register the marks ‘AMRITSAR HAVELI’ (2019) and ‘THE AMRITSAR HAVELI’ (2018) for restaurant and food services under Class 43. These marks were advertised in the Trademark Journal, prompting Haveli Restaurant and Resorts Ltd. (the appellant) to file oppositions.
The appellant argued that it had been using the brand ‘HAVELI’ since 2001 and that the impugned marks were deceptively similar, likely to confuse consumers and dilute its brand identity. The Registrar rejected the oppositions, allowed the registrations, and held that ‘HAVELI’ is a generic and commonly used word, incapable of monopoly. The appellant then filed appeals before the Delhi High Court, which were dismissed.
The appellant has challenged this on the ground that it is contrary to Sections 9, 11, 12 and 18 of the Act, as the Appellant’s Marks and Impugned Marks are deceptively similar and operate in the same Class 43. The appellant contended that he is a prior user of the mark; therefore, the registry should not have granted this mark to the respondent.
However, the High Court upheld the Registry’s findings, concluding that the appellant cannot claim exclusive ownership over the Mark ‘HAVELI’ as admittedly there are prior registrations having ‘HAVELI’ as part of the said registrations which have co-existed with the Appellant’s Marks
The Court held that HAVELI is generic, descriptive, and widely used across India, especially in the hospitality sector. It noted that the trademark registry contains numerous registrations in various classes where ‘HAVELI’ forms part of the mark, showing it is common to trade and incapable of exclusive ownership. The Court emphasised that the appellant itself had repeatedly failed to secure registration for the word mark and had not challenged those refusals, indicating even the appellant did not treat HAVELI as distinctive.
The Court found no deceptive similarity, stressing that trademarks must be assessed as a whole. Since HAVELI is generic and cannot be monopolised, the appellant cannot object merely because the impugned marks include the same word. The Court observed that the impugned marks, AMRITSAR HAVELI and THE AMRITSAR HAVELI, contain the distinctive prefix “AMRITSAR”, which differentiates them visually, phonetically, and conceptually. It also noted that the appellant’s primary registrations were either device marks or registered in unrelated classes, and thus did not give exclusive rights over the standalone word. Applying Section 17, the Court held that the marks, taken in their entirety, are distinct, and there is no likelihood of confusion in the minds of the public.
Accordingly, the Court affirmed the Registrar’s orders dated February 21, 2024 and permitted the continued registration of the marks AMRITSAR HAVELI and THE AMRITSAR HAVELI.
Appearances
For the Appellant: Mr. Shravan Kumar Bansal, Mr. Akash Chaudhary, Advocates
For Respondent No. 1 (Registrar of Trademarks): Mr. R. Venkat Prabhat, SPC with Mr. Daksh Pandit, Ms. Kamna Behrani, Mr. Ansh Kalra, Mr. Siddharth Gautam
For Respondent No. 2: Mr. J. Sai Deepak, Senior Advocate with Mr. Anshuman Upadhyay, Mr. Naseem, Mr. R. Abhishek, Mr. Garvit Sharma, Mr. Rahul Singh, Ms. Shubhangi Shashwat
