The Delhi High Court recently ordered the removal of “SOCIAL HOUSE” from the Trade Marks Register, underscoring the distinctiveness of the popular “SOCIAL” café-bar brand in the hospitality sector..Impresario, which operates a chain of popular cafés and co-working style restaurants under the “SOCIAL” name across India, had sought cancellation of a mark registered by Mumbai-based restaurateur Vardhaman Choksi. Choksi, who runs the nightclub “Escobar” in Mumbai, had registered the mark in 2011 and claimed prior use, while also challenging several of Impresario’s “SOCIAL”-formative trademarks..Justice Tejas Karia flagged concerns about Choksi’s broader conduct in acquiring trademarks. The Court observed,“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.”.The dispute centred on whether Choksi had genuinely used the “SOCIAL HOUSE” mark for the services for which it was registered. While he argued that the mark had been used in connection with events hosted at his nightclub, the Court found that such use did not qualify as valid trademark use in the relevant category.Explaining the legal position on non-use, the Court said,“Unless the non-use is explained by way of special circumstances (eg. COVID-19) in the trade, the Mark would be liable to be removed for non-use.. In the present case, it has been observed that there is no use of the Mark ‘SOCIAL HOUSE’ 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 ‘SOCIAL HOUSE ’ is wrongly remaining on the register of Trade Marks and is liable to be cancelled.".The Court clarified that Choksi’s use of the mark was confined to hosting nightlife and entertainment events at his Mumbai establishment “Escobar”, which fall under Class 41 (entertainment services). However, the “SOCIAL HOUSE” mark had been registered in Class 43, which specifically covers restaurant, café and hospitality services. Since Choksi had not operated any restaurant or hospitality service under the “SOCIAL HOUSE” mark and had only used it for events, such use did not qualify as valid use of the registered mark. Consequently, the Court found that there was no genuine use in the relevant class (Class 43)..On the other hand, the Court accepted Impresario’s evidence of extensive and continuous use of its “SOCIAL” marks since 2014, noting the brand’s significant commercial presence, multiple outlets across cities and substantial revenues. Rejecting Choksi’s argument that “SOCIAL” is a common English word incapable of exclusivity, the Court held that even commonly used words can acquire distinctiveness in a particular industry through sustained use..In its final directions, the Court allowed Impresario’s appeal and ordered the removal of the “SOCIAL HOUSE” mark, while dismissing all rectification petitions filed by Choksi against Impresario’s trademarks..Senior Advocate Chander M Lall along with Advocates Shikha Sachdeva, Manish Dhir, Kriti Rathi, Annie Jacob, Jaskaran Singh Bindra and Annanya Mehan represented Impresario..Advocates Adarsh Ramanujan, Mustafa Alam, Yashima Sharma, Lakshya Kaushik, Sidharth Kausik, Divyanshi Bansal, Parth Singh, Amit Garg, Navya, Zubair Hanifi, Saba Tasleem and Aalia appeared for Vardhaman Choksi.Central Government Standing Counsel (CGSC) Rukhmini Bobde along with Advocates Amlaan Kumar, Jatin Dhamija and Vinayak Aren appeared for the Registrar of Trade Marks..[Read Order]
