"SOCIAL" is a suggestive mark in hospitality; pending litigation is not a special circumstance excusing trademark non-use.

Impressario Entertainment and Hospitality Pvt. Ltd. ("Impressario") operates a chain of restaurants under the mark ‘SOCIAL’ (e.g., ‘ODEON SOCIAL’, ‘COLABA SOCIAL’), adopting the mark in 2012 and opening its first outlet in 2014.

Impressario holds numerous registrations for ‘SOCIAL’ and its variants across Classes 30, 32, 33, and 43.

Vardhaman Choksi ("Choksi") registered the mark ‘SOCIAL HOUSE’ (logo) in Class 43 in 2011 (granted in 2015), claiming user since 08.11.2011.

In 2017, Impressario sought rectification of Choksi's mark and filed an injunction suit.

Subsequently, Choksi filed 22 rectification petitions against Impressario's ‘SOCIAL’ marks, alleging ‘SOCIAL’ is a generic term common to the trade.

The matters were transferred from the IPAB to the Delhi High Court following the 2021 Tribunal Reforms Ordinance.

1. Whether Choksi’s mark ‘SOCIAL HOUSE’ is liable to be removed from the Register for non-use under Section 47 of the Trade Marks Act, 1999.

2. Whether the term ‘SOCIAL’ is generic/descriptive or suggestive in the context of the hospitality industry.

3. Whether the ongoing litigation between the parties constitutes "special circumstances in the trade" under Section 47(3) to excuse the non-use of a mark.

4. Whether Choksi’s conduct of registering multiple international marks without use constitutes "Trade Mark squatting".

The Court applied Section 47 of the Trade Marks Act, 1999, which permits the removal of a mark for non-use if it has not been used for five years and three months.

It relied on the "Imagination Test" from Teleecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd. to distinguish suggestive marks from descriptive ones.

Regarding "special circumstances," the Court followed Akteibolaget Jonkoping Vulcan v. V.S.V. Palanichamy Nadar, holding that such circumstances must be external forces and not voluntary acts or omissions of the trader.

Furthermore, it applied the principle that use of a mark must be genuine and within the specific class of goods/services for which it is registered, as established in Russell Corp Australia Pty Ltd. v. Shri Ashok Mahajan.

The Court found that Choksi failed to demonstrate genuine use of ‘SOCIAL HOUSE’ for restaurant services in Class 43.

His alleged use was limited to "night events" at his club ‘ESCOBAR’, which pertains to Class 41 (entertainment), not Class 43.

Consequently, the mark remained on the Register without use for the statutory period.

The Court rejected Choksi’s defense of "special circumstances" under Section 47(3), clarifying that the "precautionary" cessation of use due to litigation is a voluntary choice and does not constitute an external trade barrier or regulatory bar.

On the nature of the mark, the Court applied the Imagination Test and determined that ‘SOCIAL’ is suggestive—not generic—in the hospitality sector because it requires a mental leap to connect the word to restaurant services.

The Court observed that Choksi’s registration of over 100 international brands without corresponding use evidenced a pattern of "Trade Mark squatting," a manipulative tactic intended to extract premiums from genuine proprietors.

It held that ‘SOCIAL’ is a suggestive mark that has acquired significant goodwill and reputation synonymous with Impressario.

The Court directed the Registrar of Trade Marks to remove Choksi’s mark ‘SOCIAL HOUSE’ (Application No. 2230483) from the Register due to non-use and bad faith squatting.

All pending applications in the connected matters were disposed of accordingly.