[Cites 21, Cited by 0]

Delhi High Court

Impressario Entertainment And ... vs Vardhaman Choksi And Ors on 10 April, 2026

                           *IN THE HIGH COURT                   OF      DELHI AT     NEW DELHI

                          %                                          Judgment delivered on: 10/04/2026

                          +     C.A.(COMM.IPD-TM) 12/2023 & I.A. 4139/2024
                                IMPRESSARIO ENTERTAINMENT AND HOSPITALITY
                                PVT. LTD.                       .....Appellant
                                                               Versus

                                VARDHAMAN CHOKSI AND ORS.                           .....Respondents
                                                               AND
                          +     C.O.(COMM.IPD-TM) 72/2021

                                VARDHAMAN CHOKSI                                    .....Petitioner

                                                               Versus

                                IMPRESARIO ENTERTAINMENT AND HOSPITALITY PVT.
                                LTD. AND ANR.                   .....Respondents
                                                  AND
                          +     C.O. (COMM.IPD-TM) 93/2021
                          +     C.O. (COMM.IPD-TM) 96/2021
                          +     C.O. (COMM.IPD-TM) 98/2021
                          +     C.O. (COMM.IPD-TM) 194/2021
                          +     C.O. (COMM.IPD-TM) 212/2021
                          +     C.O. (COMM.IPD-TM) 264/2021
                          +     C.O. (COMM.IPD-TM) 269/2021
                          +     C.O. (COMM.IPD-TM) 283/2021
                          +     C.O. (COMM.IPD-TM) 333/2021
                          +     C.O. (COMM.IPD-TM) 406/2021
                          +     C.O. (COMM.IPD-TM) 47/2022
                          +     C.O. (COMM.IPD-TM) 135/2022

Signature Not Verified    C.A.(COMM.IPD-TM) 12/2023 & Connected Matters                     Page 1 of 29
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
                           +     C.O. (COMM.IPD-TM) 150/2022
                          +     C.O. (COMM.IPD-TM) 152/2022
                          +     C.O. (COMM.IPD-TM) 197/2022
                          +     C.O. (COMM.IPD-TM) 200/2022
                          +     C.O. (COMM.IPD-TM) 254/2022
                          +     C.O. (COMM.IPD-TM) 259/2022
                          +     C.O. (COMM.IPD-TM) 284/2022
                          +     C.O. (COMM.IPD-TM) 552/2022
                          +     C.O. (COMM.IPD-TM) 681/2022

                                Advocates who appeared in this case

                                For the Petitioner      :    Mr. Chander M. Lall, Senior Advocate with
                                                             Ms. Shikha Sachdeva, Mr. Manish Dhir,
                                                             Ms. Kriti Rathi, Ms. Annie Jacob, Mr.
                                                             Jaskaran Singh Bindra & Ms. Annanya
                                                             Mehan,    Advocates     for     Impressario
                                                             Entertainment and Hospitality Pvt. Ltd.

                                For the 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 and Ms. Aalia,
                                                              Advocates for Vardhaman Choksi.
                                                              Ms. Rukhmini Bobde, CGSC along with
                                                              Mr. Amlaan Kumar, Mr. Jatin Dhamija &
                                                              Mr. Vinayak Aren, Advocates for the
                                                              Registrar of Trade Marks.
                                CORAM:
                                HON'BLE MR. JUSTICE TEJAS KARIA

                                                            JUDGMENT

TEJAS KARIA, J

1. By way of the present common Judgment, C.A.(COMM.IPD-TM) 12/2023 ("Appeal") and C.O.(COMM.IPD-TM) 72/2021, C.O.(COMM.IPD-TM) 93/2021, C.O.(COMM.IPD-TM) 96/2021, C.O.(COMM.IPD-TM) 98/2021, C.O.(COMM.IPD-TM) 194/2021, C.O.(COMM.IPD-TM) 212/2021, C.O.(COMM.IPD-TM) 264/2021, C.O.(COMM.IPD-TM) 269/2021, C.O.(COMM.IPD-TM) 283/2021, C.O.(COMM.IPD-TM) 333/2021, C.O.(COMM.IPD-TM) 406/2021, C.O.(COMM.IPD-TM) 47/2022, C.O.(COMM.IPD-TM) 135/2022, C.O.(COMM.IPD-TM) 150/2022, C.O.(COMM.IPD-TM) 152/2022, C.O.(COMM.IPD-TM) 197/2022, C.O.(COMM.IPD-TM) 200/2022, C.O.(COMM.IPD-TM) 254/2022, C.O.(COMM.IPD-TM) 259/2022, C.O.(COMM.IPD-TM) 284/2022, C.O.(COMM.IPD-TM) 552/2022 and C.O.(COMM.IPD-TM) 681/2022 ("Rectification Petitions") are being decided as the issues raised therein are identical.

2. The Appeal has been filed by Impressario Entertainment and Hospitality Pvt. Ltd. ("Impressario") seeking rectification of the Mark

' ' registered under Application No. 2230483 in Class 43 in favour of Vardhaman Choksi, while the Rectification Petitions have been filed by Vardhaman Choksi against the following registered Marks of Impressario ("Impressario's Marks"). S.No. Petition No. Impressario's Mark Class & Application No.

1. C.O.(COMM.IPD-T "ODEON SOCIAL" Class: 43 M) 72/2021. App No: 3162950

2. C.O.(COMM.IPD-T "COLABA SOCIAL" Class: 32 M) 93/2021 App No: 2796783

3. C.O.(COMM.IPD-T "DEF. COL. SOCIAL" Class: 33 M) 96/2021 App No: 2952952

4. C.O.(COMM.IPD-T "FUN REPUBLIC Class: 43 M) 98/2021 SOCIAL"

App No: 3311928

5. C.O.(COMM.IPD-T "COLABA SOCIAL" Class: 33 M) 194/2021 App no: 2796784

6. C.O.(COMM.IPD-T "TODI MILL Class: 43 M) 212/2021 SOCIAL"

App no: 2975785

7. C.O.(COMM.IPD-T "TODI MILL Class: 32 M) 264/2021 SOCIAL" App no: 2975784

8. C.O.(COMM.IPD-T WHITEFIELD Class: 43 M) 269/2021 SOCIAL App No. 3162945

9. C.O.(COMM.IPD-T "SOCIAL OFFLINE" Class: 30 M) 283/2021 (WORDMARK) App no: 2781077

10. C.O.(COMM.IPD-T "DEF. COL. SOCIAL" Class: 43 M) 333/2021 App no: 2952954

11. C.O.(COMM.IPD-T "CAPITAL SOCIAL" Class: 43 M) 406/2021 App no: 3294399

12. C.O.(COMM.IPD-T "ODEON SOCIAL" Class: 33 M) 47/2022 App no: 3162948

13. C.O.(COMM.IPD-T "PALLADIUM Class: 32 M) 135/2022 SOCIAL" App no: 3051174

14. C.O.(COMM.IPD-T "MOCHA SOCIAL Class: 32 M) 150/2022 HOUSE" App no: 2382248

15. C.O.(COMM.IPD-T "SOCIAL CHHAT" Class: 32 M) 152/2022 App no: 2834742

16. C.O.(COMM.IPD-T "antiSOCIAL" Class: 43 M) 197/2022 App no: 2830081

17. C.O.(COMM.IPD-T "SOCIAL OFFLINE" Class: 33 M) 200/2022 App no: 2781070

18. C.O.(COMM.IPD-T "PALLADIUM Class: 33 M) 254/2022 SOCIAL"

App no: 3051175

19. C.O.(COMM.IPD-T "CHURCH STREET Class: 43 M) 259/2022 SOCIAL"

App no: 2736081

20. C.O.(COMM.IPD-T "SOCIAL Chhat" Class: 33 M) 284/2022 App no: 2834745

21. C.O.(COMM.IPD-T "TODI MILL Class: 33 M) 552/2022 SOCIAL"

App no: 2975783

22. C.O.(COMM.IPD-T "DEF.COL. SOCIAL" Class: 32 M) 681/2022 App no: 2952951

FACTUAL BACKGROUND:

3. On 20.10.2017, Impressario filed the rectification petition before the Intellectual Property Appellate Board ("IPAB"), Mumbai bearing No. ORA/5/2018/TM/MUM, for cancellation of the Mark

' '. On 04.12.2017, Impressario filed a suit before this Court seeking a permanent injunction against the use of the Mark 'SOCIAL HOUSE' by Vardhaman Choksi. This Court vide order dated 06.12.2017 passed an ex-parte ad-interim injunction restraining Vardhaman Choksi from opening a restaurant with the Marks 'SOCIAL HOUSE' and 'SOCIAL'.

4. Thereafter, Vardhaman Choksi filed the Rectification Petitions before the IPAB, New Delhi, seeking rectification of the Impressario's Marks from the Register of Trade Marks. Vide order dated 14.05.2018, this Court returned the plaint of Impressario in CS(COMM.) No. 826/2017 on the ground of territorial jurisdiction and granted liberty to Impressario to file the suit for injunction against the use of the Mark 'SOCIAL HOUSE' in the Bombay High Court.

5. In June 2018, Impressario filed a suit before the Bombay High Court seeking an injunction against the use of the Mark 'SOCIAL HOUSE' by Vardhaman Choksi. On 22.06.2018, Vardhaman Choksi gave an undertaking before the Bombay High Court that he will give Impressario 3 weeks' prior notice in writing if he intends to open a restaurant under the Mark 'SOCIAL HOUSE' or 'SOCIAL'. No such undertaking has been provided by Vardhaman Choksi to Impressario till date.

6. After the abolition of the IPAB and upon promulgation of Tribunals Reforms (Rationalization and Conditions of Service) Ordinance, 2021, the Rectification Petitions got transferred to this Court. Vide Order dated 01.05.2023, the record of the rectification petition filed by Impressario before IPAB, Mumbai bearing No. ORA/5/2018/TM/MUM got transferred to this Court and thereafter, the rectification petition filed by Impressario, bearing No. ORA/5/2018/TM/MUM, was registered as the Appeal.

7. After completion of arguments, judgment in the Appeal and in the Rectification Petitions was reserved on 24.12.2025. SUBMISSIONS ON BEHALF OF IMPRESSARIO:

8. The learned Senior Counsel for Impressario made the following submissions:

8.1 Impressario commenced business in the year 2001 and is engaged in providing restaurant services, including but not limited to conducting and managing restaurants and coffee shops, operating restaurants and coffee shops, providing expertise relating to provision of food and drink. Impressario presently is running various well-known restaurants and coffee shops including Smoke House Deli, Stone Water Grill, Salt Water Cafe, Le Kebabiere, The Tasting Room, Prithvi Cafe, and 'SOCIAL' and its variants.

8.2 Impressario in the year 2012, thought of a unique concept of blending the best of office and cafe by offering to the general public a collaborative work space and a multi cuisine offering.

The Trade Mark 'SOCIAL' was adopted in respect of such cafes. Since the business model of Impressario was to open

multiple 'SOCIAL' cafes in one city, they coined the unique concept of prefixing and/or suffixing the Trade Mark 'SOCIAL' with the particular area of the city and / or any other interesting prefix and / or suffix in which the cafe would be located and coined Impressario's Marks and various others to indicate to the general public the area in which the cafe was located in each city and would be nearest to them for a visit.

8.3 Combining work and play, the 'SOCIAL' cafes / restaurants of Impressario are urban hangouts designed to take people offline while still keeping them connected. Impressario's 'SOCIAL' cafes / restaurants are a collaborative workspace, a hub for artists and innovators. Even the interiors of the 'SOCIAL' cafes and bars have been designed to give a very rugged and bare feel to its customers with brick walls and bare bulbs hanging down from the ceiling, with simple wooden and leather furniture. Each 'SOCIAL' outlet operated by Impressario has a distinct theme and the interiors are designed around that theme. The theme itself has become exclusively identified to Impressario. Impressario operates over 52 'SOCIAL' restaurants in India and has obtained registrations over various Trade Marks containing 'SOCIAL' in a standalone manner or as a prefix or suffix, the details of which are as follows:

Trademark TM. No. Class Date of Journal Date of Application No. Journal Mocha 2382261 16 21/Aug/2012 1601 12/Aug/2013 Social House Mocha 2382248 32 21/Aug/2012 1753 11/Jul/2016 Social House

Mocha Social House Mocha Social Mocha Social Mocha Social Mocha Social Mocha Social Hauz Khas Social Church Street Social SOCIAL OFFLINE SOCIAL OFFLINE SOCIAL OFFLINE Social Chhatt Social Chhatt Social Chhatt Def. Col. SOCIAL Def. Col. SOCIAL Def. Col. SOCIAL Def. Col. SOCIAL Def. Col. SOCIAL Todi Mill Social Todi Mill 2382254 45 21/Aug/2012 1601 12/Aug/2013 2382255 9 21/Aug/2012 1601 12/Aug/2013 2382256 16 21/Aug/2012 1601 12/Aug/2013 2382257 25 21/Aug/2012 1601 12/Aug/2013 2382249 42 21/Aug/2012 1611 21/Oct/2013 2382251 45 21/Aug/2012 1618 09/Dec/2013 2736080 42 13/May/2014 1729 25/Jan/2016 2736081 43 13/May/2014 1729 25/Jan/2016 2781070 33 25/Jul/2014 1733 22/Feb/2016 2781074 9 25/Jul/2014 1733 22/Feb/2016 2781077 30 25/Jul/2014 1733 22/Feb/2016 2834742 32 30/Oct/2014 1741 18/Apr/2016 2834745 33 30/Oct/2014 1746 23/May/2016 2834744 42 30/Oct/2014 1741 18/Apr/2016 2952950 25 29/Apr/2015 1753 11/Jul/2016 2952951 32 29/Apr/2015 1753 11/Jul/2016 2952952 33 29/Apr/2015 1753 11/Jul/2016 2952953 42 29/Apr/2015 1753 11/Jul/2016 2952954 43 29/Apr/2015 1753 11/Jul/2016 2975784 32 01/Jun/2015 1755 25/Jul/2016 2975783 33 01/Jun/2015 1755 29/Feb/2016

Social Todi Mill 2975786 42 01/Jun/2015 1734 25/Jul/2016 Social Todi Mill 2975785 43 19/Nov/2015 1755 25/Jul/2016 Social Palladium 3051174 32 09/Sep/2015 1758 15/Aug/2016 Social Palladium 3051175 33 09/Sep/2015 1758 15/Aug/2016 Social Whitefield 3162944 42 19/Jan/2016 1783 06/Feb/2017 Social Whitefield 3162945 43 19/Jan/2016 1762 12/Sep/2016 Social ODEON 3162948 33 19/Jan/2016 1763 19/Sep/2016 SOCIAL ODEON 3162950 43 19/Jan/2016 1763 19/Sep/2016 SOCIAL Capital 3294398 42 27/Jun/2016 1770 07/Nov/2016 Social Capital 3294399 43 27/Jun/2016 1770 07/Nov/2016 Social Fun 3311928 43 18/Jul/2016 1776 19/Dec/2016 Republic Social

8.4 Impressario's annual revenue from restaurants under the Mark 'SOCIAL' for the Financial Year ("FY") 2024-25 was ₹5,89,39,00,000 while the promotional expenses incurred by Impressario during the FY 2024-25 was ₹29,19,00,000.

Impressario has also successfully obtained various favourable orders from this Court recognizing its rights in Impressario's Marks.

                                8.5     Vardhaman Choksi applied for the registration of the Mark

                                        '                                 ' bearing Application No.

2230483 in Class 43 on 08.11.2011 with a user date of 08.11.2011. The registration for the same was granted on 14.10.2015.

8.6 It is well settled that use of a Trade Mark has to be genuine use and in the relevant class of goods and services in which the mark is registered, which is absent in the present case. Admittedly, Vardhaman Choksi does not have a restaurant

under the Mark ' '. Therefore, the

Mark ' ' is liable to be expunged under Section 47 of the Trade Marks Act, 1999 ("Act"). It is an admitted position that Vardhaman Choksi has never used the

Mark ' ' in respect of the services for which it is registered, i.e., restaurant or restaurant related services under Class 43. In the judgments of Russell Corp Australia Pty Ltd. v. Shri Ashok Mahajan, 2023 SCC OnLine Del 4796 and Kiranakart Technologies Private Limited v. Mohammad Arshad & Anr., 2025 SCC OnLine Del 1401, this Court has held that it is the settled legal position that use has to be genuine use in the relevant class of goods and services. Unless the non-use is explained by way of special circumstances in the trade, the mark would be liable to be removed for non-use.










                                 8.7    Furthermore, admittedly Vardhaman Choksi applied for

                                       registration of the Mark '                                        ' in

Class 43 for arranging and conducting of entertainment events which comes under the ambit of Class 41 and not under Class 43 and even so, mere trading with respect to one category of products in a class does not give Vardhaman Choksi the right to claim monopoly over the entire Class of products as has been held in the judgment of Vishnudas Kishandas v. Vazir Sultan Tobbaco Co. Ltd., Hyedrabad & Anr., AIR 1996 SC 2275. The Madras High Court in the judgment of Financiare Batteur Sas v. Kalai Arasu, Neutral Citation: 2024:MHC:4092, held that mere anticipation of cancellation petition does not constitute special circumstance in the trade as envisaged in Section 47(3) of the Act. The Calcutta High Court in the judgment of Akteibolaget Jonkoping Vulcan v. V.S.V. Palanichamy Nadar, 1968 SCC OnLine CAL 48, held that exposition of special circumstances in the trade as being the non use of the trade mark emphasises the aspect that the non-use is due to external forces and not due to voluntary act or omission on the part of the trader. Special circumstances in the trade must be special circumstances for all the trade in those particular goods. 8.8 Vardhaman Choksi has wrongly registered over 100 international brands in India, with no corresponding use of the same. Vardhaman Choksi currently runs only a single restaurant in Mumbai by the name 'ESCOBAR' which is also copied from

a famous restaurant in Malibu, USA. This Court in the judgments of Volans Uptown LLC v. Mahendra Jeshabhai Bambhaniya, 2024 SCC OnLine Del 881 and Osram GMBH & Anr. vs. Tejmeet Singh Sethi & Anr., 2022 SCC OnLine Del 1744, has held that the practice of Trade Mark squatting is a menace and needs to be curbed.

8.9 Existence of various Marks containing common elements to those of the Impressario's Marks will only help the case of Vardhaman Choksi if he was able to show substantial use of those Marks as has been held in Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142. The Mark 'SOCIAL' is neither generic nor it is descriptive, it is suggestive. In the judgments of T.N. Venugopal v. Ushodaya Enterprises Limited, (2011) 4 SCC 85 and Bata India Limited v. Chawla Boot House, 2019 SCC OnLine Del 8147, it has been held that the line between suggestive marks and descriptive marks is very thin and the Imagination Test has been laid down to determine as to whether a Mark is descriptive or suggestive.

8.10 In view of the above, the Appeal deserves to be allowed and the

Mark ' ' is liable to be removed from the Register of Trade Marks and the Rectification Petitions deserve to be dismissed.

SUBMISSIONS ON BEHALF OF VARDHAMAN CHOKSI

9. The learned Counsel for Vardhaman Choksi made the following submissions:

9.1 The Mark 'SOCIAL' is generic and is commonly used. The Cambridge dictionary defines the word itself as an adjective, "relating to activities in which you meet and spend time with other people and that happens during the time you are not working." With the advent of the Social Media age, the word 'SOCIAL' has become a part of common parlance and everyday language. It has also been widely adopted in conjunction with words and logos as Trade Marks by several parties for diversified goods and services in India and abroad. A bare search on the Trade Mark registry website indicates how commonly the word has been adopted and that several entities have acquired rights in their Trade Marks through long use and registration. This Court in the judgment of Delhivery Private Limited v. Treasure Vase Ventures Private Limited, 278 (2021) DLT 485, held that no party can be allowed to have exclusive right to use and register a generic word.

9.2 Impressario has applied and acquired Trade Mark registration for the Mark 'SOCIAL', either in a standalone manner or as a prefix or a suffix, under various classes which is clear evidence of intent that Impressario is trying to restrain any third party from using the English word 'SOCIAL' jointly, severally or in any manner whatsoever with respect to restaurant and bar services and such an attempt is to create a monopoly over the

Mark 'SOCIAL' in relation to the hospitality industry that would gravely disadvantage and hamper the rights of other players in the market. In the judgment of Stokley Van Camp, Inc v. Heinz India Private Limited, 2010 SCC OnLine Del 2153, this Court held that the trade marks which are formed from commonly used words of the current language cannot be granted exclusive rights. This judgment was challenged before the Division Bench of this Court in Stokley Van Camp, Inc v. Heinz India Private Limited, FAO(OS) No. 488/2010 wherein the Division Bench upheld the judgment and held that proprietor of a registered trade mark cannot sue for infringement if the use of the Trade Mark by the defendant falls within the exceptions carved out in Sections 30 and 35 of the Act. Stokley filed a SLP against the decisions of the Single Judge and the Division Bench, being SLP (C) No. 8016/2011, the SLP was dismissed, however, the question of law was left open.

                                9.3    Vardhaman Choksi applied for the registration of the Trade

                                       Mark '                                 ' on 08.11.2011, vide

Application No. 2230483, under Class 43. Vardhaman Choksi relies on the invoices issued since 20.11.2011 bearing the Trade

Mark ' ' to establish its prior use

of the Trade Mark ' '. In Tata Sons Ltd. v. Manoj Dodia & Ors., CS (OS) No. 264/2008, this

Court vide judgment dated 28.03.2011 has held that when a trade mark is used on an invoice issued for selling the goods, it does indicate connection between the goods being sold under the invoice and the trade mark which the invoice bears, and therefore, amounts to use of the mark in relation to the goods, which are sold under that invoice. In 2014, there was a massive fire at the premises of Escobar, the restaurant of Vardhaman Choksi, which was reported extensively in the media. Because of the said fire, a lot of material and evidence, qua the use of the

Mark ' ', could not be retrieved by Vardhaman Choksi.

9.4 Impressario has admittedly opened its first outlet under the Mark 'SOCIAL' in the year 2014, which is after 3 years of the continuous and uninterrupted usage of the Mark

' ' by Vardhaman Choksi.

Vardhaman Choksi launched and owns Asia's largest bar since 2009 named Escobar in Mumbai, which boasts a bar longer than 77 feet and is one of the major attractions in Mumbai, Maharashtra and has acquired immense popularity among the celebrities and general public. The Mark

' ' has been extensively used for hosting events at night in Escobar and has come to be exclusively associated with the tailored nights attended by various celebrities and covered by media channels for publicity.

'SOCIAL HOUSE' events garnered enthusiasm among the partygoers and socialites in a short span of time. As a result, the profits of 'ESCOBAR' lounge rose substantially from FY 2011-2012 onwards. The right of Vardhaman Choksi as a prior user will override those of the subsequent user, even though it has been accorded registration of its Trade Mark. The rights of the proprietor who was first to the market have been recognised in the judgments in Neon Laboratories v. Medical Technologies, (2016) 2 SCC 672, Victoria Foods Pvt. Ltd. v. Rajdhani Masala Co. & Ors., CS (Comm) 108/2021 judgment dated 01.09.2021, The Timken Company v. Timken Services Pvt. Ltd., CS (OS) No. 3/2010 judgment dated 30.05.2013, Cadila Healthcare Limited v. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952 and S. Syed Mohideen vs. P. Sulochana Bai, AIR 2016 SCC 683.

9.5 The present Appeal is a quintessential example of how Vardhaman Choksi, sought to be stifled under the garb of intellectual property by Impressario. Impressario has gone to the length of even calling Vardhaman Choksi, a 'Rank Trade Mark Squatter' and submitting a list of all the Trade Marks that have been applied by Vardhaman Choksi, without an iota of relevance to the case. Impressario itself has registered known international brands like 'JAGERBOMB', 'LA VA LA VA', 'SANGRIA', amongst many others. The First Mark applied by Impressario with the word 'SOCIAL' was 'SOCIAL MOCHA'. In fact, the Impressario's adoption of the mark 'MOCHA' itself

is in bad faith as the brand is prior owned by McDonalds and has been challenged vehemently by the same. Impressario is deliberately trying to mislead this Court by diverting the attention from Vardhaman Choksi's prior use and registration by mudslinging Vardhaman Choksi and repeatedly alleging Trade Mark squatting which is not true and is also irrelevant to the issue in the Appeal and the Rectification Proceedings. 9.6 The idea of prefixing and / or suffixing the Trade Mark 'SOCIAL' with particular area of the city and / or any other interesting suffix and / or prefix in which the café would be located is copied from Mr. Jason Atherton, who first implemented and launched 'Pollen Street Social' and has obtained a Trade Mark registration for the same and it has been running since the year 2010, much before Impressario started its restaurant business with the suffix 'SOCIAL' and the same idea is blatantly copied by Impressario and falsely implicating that the idea is unique and coined by Impressario.

                                9.7    Impressario has sought to rectify the Register of Trade Marks
                                       and      to      remove       Vardhaman      Choksi's        Mark

                                       '                                  ' for non-use. Vardhaman

                                       Choksi used the Mark '                                           '

continuously for seven years, from 2011 to 2018, and only ceased using it due to the litigation initiated by the Petitioner and orders passed thereunder. The Supreme Court in Hardie Trading (supra) has held that removal for non-use shall only be

in cases where there is a clear intention to abandon the trade mark. At no point did Vardhaman Choksi abandon the Mark

' ', in fact, Vardhaman Choksi has always intended to continue using it. This is clearly demonstrated by the fact that Vardhaman Choksi utilised the

Mark ' ' for a significant duration of seven years and has been actively engaged in litigation since 2018 to protect its rights over the mark. The importance of the

Mark ' ' to Vardhaman Choksi is further evidenced by his persistent efforts to secure it, as seen from the filing of the Rectification Petitions against Impressario and the substantial time and money invested in these legal proceedings. Vardhaman Choksi's actions unequivocally illustrate the value placed on the Mark

' ' and the intent to maintain its use and protection.

                                9.8    Actions taken pursuant to ongoing litigation and court orders
                                       cannot       be   construed   as   abandonment     of     the   Mark

                                       '                                  ' or as having no intention to

use it in the future. The principle of safe distance applies to parties in ongoing litigation and / or those injuncted by the Courts and thus, Vardhaman Choksi has adhered to this principle in its conduct. Vardhaman Choksi remains committed

to protecting its rights over the Mark

' ' and intends to resume its use once the legal proceedings are resolved.

9.9 Section 47(3) of the Act carves out an exception to non-use.

The circumstances of the present case fall under the category of special circumstances in the trade as contemplated under Section 47(3) of the Act. As a result, the standard time period of 5 years and 3 months for non-use of the Mark

' ' has not expired, considering the impact of the pandemic and the associated delays. Thus, Vardhaman Choksi's right to the Mark

' ' remains intact, and the period of non-use should not be held against Vardhaman Choksi during these unprecedented times as has been held in Hardie Trading (supra) and Ace Technologies Corp and Ors v. Communication Components Antenna Inc., 2023 SCC OnLine Del 2082.

SUBMISSIONS ON BEHALF OF THE REGISTRAR OF TRADE MARKS:

10. The learned Counsel for the Registrar of Trade Marks submitted that the Registrar of Trade Marks is a formal party and will abide by any Order passed by this Court.

ANALYSIS AND FINDINGS:

11. The learned Senior Counsel for Impressario submitted that Impressario adopted the Mark 'SOCIAL' in the year 2012 and has since expanded its chain of restaurants under the Impressario's Marks pan India.

In order to protect its proprietary rights, Impressario has obtained Trade Mark registrations for various Marks with the Mark 'SOCIAL' either in a standalone manner or as a prefix or as a suffix, some of which are the Impressario's Marks which have been challenged in the Rectification Petitions and even though Impressario is the subsequent adopter, it is still the only bona fide user. The Impressario's Marks which have been challenged in the Rectification Petitions are not generic Marks but are rather Suggestive. The existence of various Marks comprising of common elements of Impressario's Marks will only help the case of Vardhaman Choksi if he is able to show substantial use of the same.

12. The learned Senior Counsel for Impressario further submitted that the

Mark ' ' has never been used by Vardhaman Choksi with respect to the goods and service it was registered for and therefore, is liable to be cancelled and removed from the Register of Trade Marks under Section 47 of the Act. No special circumstances in the trade as envisaged under Section 47(3) of the Act have been demonstrated by

Vardhaman Choksi for non use of the Mark ' '.

Further, Vardhaman Choksi is a Trade Mark squatter who routinely adopts Well-Known Trade Marks, without bona fide intent and uses it for obtaining unfair advantage.

13. Per contra, the learned Counsel for Vardhaman Choksi submitted that 'SOCIAL' is a generic term and Impressario cannot have the monopoly to use the Mark 'SOCIAL' with respect to restaurant services. The Mark 'SOCIAL' is common to trade and there are a lot of other companies using the Mark 'SOCIAL' for various goods and services. Vardhaman Choksi is also the prior user and received prior registration of the Mark

' ' and has been using the same for hosting events at his club 'ESCOBAR' in Mumbai and has produced bills using the

Mark ' ' as evidence of use.

14. It was further submitted by the learned Counsel on behalf of Vardhaman Choksi that Vardhaman Choksi is not a squatter of Trade Marks as has been alleged by Impressario, instead, it is Impressario who has copied the idea of using the Mark 'SOCIAL' in a standalone manner or as a prefix or suffix, from various International brands. Further, Vardhaman Choksi was

using the Mark ' ' continuously from 2011 to 2018, and only stopped using it considering the ongoing litigations between Impressario and Vardhaman Choksi, thus, the present case falls in the category of special circumstances in the trade and therefore the Mark

' ' falls within the exception of non-use laid down under Section 47(3) of the Act.

15. From the averments made in the Appeal and the Rectification Petitions and the evidence on record, Impressario has been able to prove that Impressario is the registered proprietor of Impressario's Marks. Due to its

long and extensive use, Impressario has also been able to demonstrate and prove the goodwill and reputation in respect of Impressario's Marks.

16. Impressario has been using the Impressario's Marks continuously and uninterruptedly at least since the year 2014. Impressario has been expanding its foothold in the hospitality industry. Impressario has earned considerable goodwill and reputation in India which is evident from the enormous revenue earned by Impressario since FY 2014-15. The total turnover for Impressario from dealing under goods and services under the Impressario's Marks in FY 2024-25 was ₹5,89,39,00,000/-. Impressario has also spent a large amount of money as promotional expenditure between the FY 2014-15 and 2024-25, the promotion expenditure of Impressario in the FY 2024-25 was ₹29,19,00,000/- and has led to the Mark 'SOCIAL' becoming synonymous with Impressario alone.

17. In the Imagination Test, it must be determined that when a consumer comes across the trade mark, any imagination or mental leap is required to form an association between the mark and the product. When some level of imagination or mental leap is required then the mark is suggestive. This Court in the judgment of Teleecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd., 2019 SCC OnLine Del 8739, held that the category of suggestive marks refers to those marks which are neither exactly descriptive on the one hand, nor truly fanciful on the other. A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods, further a Mark maybe generic qua certain businesses, however, but not across the board for all businesses or trades or industries. The Mark 'SOCIAL' with respect to the hospitality industry has become associated with Impressario and is not generic for the hospitality industry.

18. The use of the Mark 'SOCIAL' with respect to hospitality services is not generic and therefore, the judgment in the case of Delhivery Private Limited (supra) will not help the case of Vardhaman Choksi. Existence of various Marks containing elements common to those of the Impressario's Marks will only help the case of Vardhaman Choksi if he was able to show substantial use of those Marks as has been held in Corn Products (supra).

19. A perusal of Section 47 of the Act would reveal that a registered Trade Mark is liable to be taken off the Register of Trade Marks, if the registered Mark is not used for a period of five years and three months prior to the date of filing of the Petition. This has been laid down in Section 47(1)(b) of the Act.

20. Vardhaman Choksi has never used its registered Mark

' ' with respect to the services for which it was registered in Class 43, instead, Vardhaman Choksi has admitted in his

pleadings that the Mark ' ' was used for certain events at night at its restaurant named 'ESCOBAR'. Arranging and conducting of entertainment events comes under the ambit of Class 41 and not under Class 43. It is settled law that to establish use of a Mark, the use of the Mark must be with respect to the goods and services in respect of which it was registered. This view has been consistently upheld in the judgments of Russell Corp (supra) and Kiranakart Technologies (supra).

21. Impressario has placed on record the documents to prove the continuous use of Impressario's Mark with respect to the goods and services for which it was registered. The adoption of the Impressario's Mark has been proved to be bona fide. Vardhaman Choksi is admittedly the prior

registrant of the Mark ' ', however, he has not been able to show any genuine use of the Mark

' ' with respect to the services it had obtained the registration.

22. The exception of special circumstances in the trade as has been carved out in Section 47(3) of the Act contemplates a situation where a registered proprietor can defend its rights over a Trade Mark despite non-use of the Trade Mark. For the exception under Section 47(3) to be applicable, the registered proprietor must show that special circumstances in the trade did not allow him to use the trade mark with respect to the goods or services for which it was registered. The exception of special circumstances in the trade include either a statutory or regulatory bar against the use of the registered Mark and not to any intention to abandon or not to use the trade mark in relation to the goods or services to which the application relates. As has been in the judgment of Akteibolaget Jonkoping (supra) that special circumstances in the trade include situations where non-use of a registered mark is due to external forces and not due to voluntary act or omission on the part of the trader. Special circumstances in the trade must be special circumstances for all the goods in those particular goods. Special circumstances in the trade shall be some external force, distinct from voluntary acts of an individual.

23. Vardhaman Choksi has pleaded that he has stopped using the Mark

' ' as a precautionary measure considering the multiple litigations between Impressario and him and the ongoing litigations

between the Parties is the special circumstance due to which he is not using

the Mark ' ' but he does not have the intention

of abandoning the Mark ' ' and has constantly

used the Mark ' ' between 2011 and 2018. It has been held in the judgment of Financiare Batteur (supra) that imminent threat of cancellation of Mark upon its registration is not a special circumstance in the trade under Section 47(3) of the Act.

24. In the context of non-use, it is the settled legal position that use must be genuine use in the relevant class of goods and services. Unless the non-use is explained by way of special circumstances in the trade, the Mark would be liable to be removed for non-use. In the present case, no special circumstances have been cited and, in these facts, the Mark

' ' is liable to be removed on the ground of non-use itself. Under Section 57 of the Act, if any Trade Mark is wrongly remaining on the Register of Trade Marks, the same would be liable to be rectified. In the present case, it has been observed that there is no use of the

Mark ' ' with respect to the relevant services it was registered for, and Vardhaman Choksi has been unable to substantiate special circumstances in the trade for non-use thereof and therefore, the

Mark ' ' is wrongly remaining on the register of Trade Marks and is liable to be cancelled.

25. Facts in the present case suggest a pattern of Trade Mark squatting by Vardhaman Choksi. As no genuine use of the Mark

' ' with respect to the services for which it was registered has been demonstrated by Vardhaman Choksi. Impressario has produced a list of over a hundred internationally recognised Trade Marks that Vardhaman Choksi has registered in India, with no corresponding use of the same. The evidence points towards Vardhaman Choksi being a squatter of Trade Marks. Vardhaman Choksi's approach of applying for Marks identical to globally renowned Marks reflects a deliberate practice of Trade Mark squatting. This manipulative tactic entails adopting, seeking registration of, or even securing registration for Trade Marks linked with established brands, with the calculated intent of later selling these rights at a premium to the genuine Trade Mark proprietors. Such conduct undermines the sanctity of the Trade Mark Register and highlights the necessity to uphold and protect the rights of bona fide proprietors. Accordingly, the

Mark ' ' is liable to be rectified from the Register of Trade Marks.

CONCLUSION

26. In view of the above analysis, it is directed that:

i. The Appeal C.A.(COMM.IPD-TM) 12/2023 is allowed and the Registrar of Trade Marks is directed to remove the Impugned Trade

Mark, ' ' registered under Trade Mark Application No. 2230483, in Class 43, from the Register of Trade Marks. The Appeal and the pending Application stand disposed of.

ii. The Rectification Petitions being C.O.(COMM.IPD-TM) 72/2021, C.O.(COMM.IPD-TM) 93/2021, C.O.(COMM.IPD-TM) 96/2021, C.O.(COMM.IPD-TM) 98/2021, C.O.(COMM.IPD-TM) 194/2021, C.O.(COMM.IPD-TM) 212/2021, C.O.(COMM.IPD-TM) 264/2021, C.O.(COMM.IPD-TM) 269/2021, C.O.(COMM.IPD-TM) 283/2021, C.O.(COMM.IPD-TM) 333/2021, C.O.(COMM.IPD-TM) 406/2021, C.O.(COMM.IPD-TM) 47/2022, C.O.(COMM.IPD-TM) 135/2022, C.O.(COMM.IPD-TM) 150/2022, C.O.(COMM.IPD-TM) 152/2022, C.O.(COMM.IPD-TM) 197/2022, C.O.(COMM.IPD-TM) 200/2022, C.O.(COMM.IPD-TM) 254/2022, C.O.(COMM.IPD-TM) 259/2022, C.O.(COMM.IPD-TM) 284/2022, C.O.(COMM.IPD-TM) 552/2022 and C.O.(COMM.IPD-TM) 681/2022 are dismissed.

27. A copy of the Judgment is directed to be sent to the Trade Mark Registry at e-mail: [email protected] for necessary compliance.

TEJAS KARIA, J

APRIL 10, 2026 'AK'