In an appeal filed before the Delhi High Court by Impressario Entertainment and Hospitality Pvt. Ltd. (Impressario) seeking rectification of the Mark ‘SOCIAL HOUSE’ registered in favour of Vardhaman Choksi, a restaurateur from Mumbai, a Single Judge Bench of Justice Tejas Karia allowed the appeal, and directed the removal of the impugned mark from the Register of Trade Marks.
On 04-12-2017, Impressario filed a suit before this Court seeking a permanent injunction against the use of the Mark ‘SOCIAL HOUSE’, and was granted an ex parte ad interim injunction restraining Vardhaman Choksi from opening a restraint with the said mark and ‘SOCIAL’. Thereafter, Vardhaman Choksi filed rectification petitions before the Intellectual Property Appellate Board (IPAB), New Delhi, seeking rectification of Impressario’s marks from the Register of Trade Marks.
This Court returned Impressario’s plaint on grounds of territorial jurisdiction and granted it liberty to file the same before the Bombay High Court. In the suit filed thereafter, Vardhaman Choksi gave an undertaking before the Bombay High Court that he would give 3 weeks’ prior notice if he intends to open a restraint under the mark ‘SOCIAL HOUSE’ or ‘SOCIAL’, but no such undertaking was given to Impressario. After the abolition of IPAB, the petitions were transferred to this Court.
Impressario submitted that it had adopted the mark ‘SOCIAL’ in 2012 and had expanded its chain of restaurants under the mark pan-India. To protect its proprietary rights, Impressario obtained Trade Mark registrations for various marks with ‘SOCIAL’ either in a standalone manner or as a prefix/suffix. Impressario asserted that its marks at issue in the rectification petitions were not generic but rather suggestive.
It was also asserted that the mark ‘SOCIAL HOUSE’ had never been used by Vardhaman Choksi for goods or services that it was registered for, and was liable to be removed from the Register of Trade Marks. It was alleged that he was a Trade Mark squatter who routinely adopted well-known Trade Marks with mala fide intent, and to obtain unfair advantage.
Vardhaman Choksi submitted that he had applied for registering the mark ‘SOCIAL HOUSE’ on 08-11-2011 and relied on invoices to establish its prior use. He asserted that ‘SOCIAL’ was a generic term and that Impressario could not have a monopoly on using the same for restaurant services, as many other companies were also using the same mark for various goods and services. He contended that he had been using ‘SOCIAL HOUSE’ continuously from 2011 to 2018 and had only stopped, considering the ongoing litigations.
The Court found that Impressario had been able to prove that it was the registered proprietor of its marks, and that it had also proved the goodwill as well as reputation through its long and extensive use. It was stated that Impressario had been using the marks continuously since 2014 and had earned considerable goodwill, given that the total turnover in the Financial Year 2024-25 was Rs. 5,89,39,00,000/-.
Further, the Court stated that the mark ‘SOCIAL’ regarding the hospitality industry had become associated with Impressario and was not generic for this industry. The Court perused Section 47 of the Trade Marks Act, 1999 (Act), and said that a registered mark is liable to be taken off the Register of Trade Marks if the same is not used for five years and three months before the date of filing of the petition. It was noted that Vardhaman Choksi had not used ‘SOCIAL HOUSE’ for services that it was registered for, and that the same had only been used for certain night events at his restaurant ‘ESCOBAR’, which comes under the ambit of Class 41 and not 43.
The Court admitted that Vardhaman Choksi was the prior registrant of the mark ‘SOCIAL HOUSE’, but said that it had not been able to show any genuine use of said mark with respect to the services for which it had obtained the registration. Further, it was said that unless non-use is explained by special circumstances in the trade, the Mark would be liable to removal for non-use. The Court held that since the mark ‘SOCIAL HOUSE’ was wrongly remaining on the Register of Trade Marks, the same was liable to be cancelled.
The Court found a pattern of Trade Mark squatting by Vardhaman Choksi as a list had been produced showing over a hundred internationally recognized Trade Marks that he had registered in India, with no corresponding use for the same. It was stated that this manipulation is done with the calculated intent of later selling these rights at a premium to the genuine trademark proprietors. The Court held that the mark ‘SOCIAL HOUSE’ was liable to be rectified from the Register of Trade Marks.
Thus, the Court allowed the appeal and directed the removal of the impugned trade mark ‘SOCIAL HOUSE’.
Appearances:
For Petitioner – Mr. Chander M. Lall (Sr. Adv), Ms. Shikha Sachdeva, Mr. Manish Dhir, Ms. Kriti Rahi, Ms. Annie Jacob, Mr. Jaskaran Singh Bindra, Ms. Annanya Mehan
For Respondents – Mr. Adarsh Ramanujan, Mr. Mustafa Alam, Ms. Yashima Sharma, Mr. Lakshya Kaushik, Mr. Sidharth Kausik, Ms. Divyanshi Bansal, Mr. Parth Singh, Mr. Amit Garg, Ms. Navya, Mr. Zubair Hanifi, Ms. Saba Tasleem, Ms. Aalia, Ms. Rukhmini Bobde (CGSC), Mr. Amlaan Kumar, Mr. Jatin Dhamija, Mr. Vinayak Aren
