C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 1 of 29

*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

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 2 of 29

+ 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

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 3 of 29

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

M) 72/2021.

“ODEON SOCIAL”

Class: 43

App No: 3162950

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 4 of 29

2. C.O.(COMM.IPD-T

M) 93/2021

“COLABA SOCIAL”

Class: 32

App No: 2796783

3. C.O.(COMM.IPD-T

M) 96/2021

“DEF. COL. SOCIAL”

Class: 33

App No: 2952952

4. C.O.(COMM.IPD-T

M) 98/2021

“FUN REPUBLIC

SOCIAL”

Class: 43

App No: 3311928

5. C.O.(COMM.IPD-T

M) 194/2021

“COLABA SOCIAL”

Class: 33

App no: 2796784

6. C.O.(COMM.IPD-T

M) 212/2021

“TODI MILL

SOCIAL”

Class: 43

App no: 2975785

7. C.O.(COMM.IPD-T

M) 264/2021

“TODI MILL

SOCIAL”

Class: 32

App no: 2975784

8. C.O.(COMM.IPD-T

M) 269/2021

WHITEFIELD

SOCIAL

Class: 43

App No. 3162945

9. C.O.(COMM.IPD-T

M) 283/2021

“SOCIAL OFFLINE”

(WORDMARK)

Class: 30

App no: 2781077

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 5 of 29

10. C.O.(COMM.IPD-T

M) 333/2021

“DEF. COL. SOCIAL”

Class: 43

App no: 2952954

11. C.O.(COMM.IPD-T

M) 406/2021

“CAPITAL SOCIAL”

Class: 43

App no: 3294399

12. C.O.(COMM.IPD-T

M) 47/2022

“ODEON SOCIAL”

Class: 33

App no: 3162948

13. C.O.(COMM.IPD-T

M) 135/2022

“PALLADIUM

SOCIAL”

Class: 32

App no: 3051174

14. C.O.(COMM.IPD-T

M) 150/2022

“MOCHA SOCIAL

HOUSE”

Class: 32

App no: 2382248

15. C.O.(COMM.IPD-T

M) 152/2022

“SOCIAL CHHAT”

Class: 32

App no: 2834742

16. C.O.(COMM.IPD-T

M) 197/2022

“antiSOCIAL”

Class: 43

App no: 2830081

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 6 of 29

17. C.O.(COMM.IPD-T

M) 200/2022

“SOCIAL OFFLINE”

Class: 33

App no: 2781070

18. C.O.(COMM.IPD-T

M) 254/2022

“PALLADIUM

SOCIAL”

Class: 33

App no: 3051175

19. C.O.(COMM.IPD-T

M) 259/2022

“CHURCH STREET

SOCIAL”

Class: 43

App no: 2736081

20. C.O.(COMM.IPD-T

M) 284/2022

“SOCIAL Chhat”

Class: 33

App no: 2834745

21. C.O.(COMM.IPD-T

M) 552/2022

“TODI MILL

SOCIAL”

Class: 33

App no: 2975783

22. C.O.(COMM.IPD-T

M) 681/2022

“DEF.COL. SOCIAL”

Class: 32

App no: 2952951

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 7 of 29

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.

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 8 of 29

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

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 9 of 29

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

Application

Journal

No.

Date of

Journal

Mocha

Social House

2382261 16 21/Aug/2012 1601 12/Aug/2013

Mocha

Social House

2382248 32 21/Aug/2012 1753 11/Jul/2016

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 10 of 29

Mocha

Social House

2382254 45 21/Aug/2012 1601 12/Aug/2013

Mocha

Social

2382255 9 21/Aug/2012 1601 12/Aug/2013

Mocha

Social

2382256 16 21/Aug/2012 1601 12/Aug/2013

Mocha

Social

2382257 25 21/Aug/2012 1601 12/Aug/2013

Mocha

Social

2382249 42 21/Aug/2012 1611 21/Oct/2013

Mocha

Social

2382251 45 21/Aug/2012 1618 09/Dec/2013

Hauz Khas

Social

2736080 42 13/May/2014 1729 25/Jan/2016

Church

Street Social

2736081 43 13/May/2014 1729 25/Jan/2016

SOCIAL

OFFLINE

2781070 33 25/Jul/2014 1733 22/Feb/2016

SOCIAL

OFFLINE

2781074 9 25/Jul/2014 1733 22/Feb/2016

SOCIAL

OFFLINE

2781077 30 25/Jul/2014 1733 22/Feb/2016

Social

Chhatt

2834742 32 30/Oct/2014 1741 18/Apr/2016

Social

Chhatt

2834745 33 30/Oct/2014 1746 23/May/2016

Social

Chhatt

2834744 42 30/Oct/2014 1741 18/Apr/2016

Def. Col.

SOCIAL

2952950 25 29/Apr/2015 1753 11/Jul/2016

Def. Col.

SOCIAL

2952951 32 29/Apr/2015 1753 11/Jul/2016

Def. Col.

SOCIAL

2952952 33 29/Apr/2015 1753 11/Jul/2016

Def. Col.

SOCIAL

2952953 42 29/Apr/2015 1753 11/Jul/2016

Def. Col.

SOCIAL

2952954 43 29/Apr/2015 1753 11/Jul/2016

Todi Mill

Social

2975784 32 01/Jun/2015 1755 25/Jul/2016

Todi Mill 2975783 33 01/Jun/2015 1755 29/Feb/2016

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 11 of 29

Social

Todi Mill

Social

2975786 42 01/Jun/2015 1734 25/Jul/2016

Todi Mill

Social

2975785 43 19/Nov/2015 1755 25/Jul/2016

Palladium

Social

3051174 32 09/Sep/2015 1758 15/Aug/2016

Palladium

Social

3051175 33 09/Sep/2015 1758 15/Aug/2016

Whitefield

Social

3162944 42 19/Jan/2016 1783 06/Feb/2017

Whitefield

Social

3162945 43 19/Jan/2016 1762 12/Sep/2016

ODEON

SOCIAL

3162948 33 19/Jan/2016 1763 19/Sep/2016

ODEON

SOCIAL

3162950 43 19/Jan/2016 1763 19/Sep/2016

Capital

Social

3294398 42 27/Jun/2016 1770 07/Nov/2016

Capital

Social

3294399 43 27/Jun/2016 1770 07/Nov/2016

Fun

Republic

Social

3311928 43 18/Jul/2016 1776 19/Dec/2016

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.

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 12 of 29

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.

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 13 of 29

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

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 14 of 29

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.

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 15 of 29

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

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 16 of 29

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

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 17 of 29

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.

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 18 of 29

‘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

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 19 of 29

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

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 20 of 29

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

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 21 of 29

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.

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 22 of 29

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.

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 23 of 29

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

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 24 of 29

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.

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 25 of 29

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

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 26 of 29

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

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 27 of 29

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.

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 28 of 29

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.

C.A.(COMM.IPD-TM) 12/2023 & Connected Matters Page 29 of 29

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: llc-ipo@gov.in for necessary compliance.

TEJAS KARIA, J

APRIL 10, 2026

‘AK’