Suggestive marks merit protection; use in an incorrect class constitutes non-use warranting trademark rectification.

Impressario Entertainment ("Impressario") adopted the mark ‘SOCIAL’ in 2012 for its café-coworking spaces and registered various variants (e.g., "ODEON SOCIAL", "COLABA SOCIAL")

Vardhaman Choksi ("Choksi") registered the mark ‘SOCIAL HOUSE’ (logo) in Class 43 in 2011

Impressario sought the removal of Choksi’s mark from the Register on grounds of non-use under Section 47 of the Trade Marks Act, 1999

Choksi filed 22 rectification petitions against Impressario’s marks, contending that ‘SOCIAL’ is a generic/descriptive term commonly used in parlance and the hospitality industry, thus incapable of protection

Procedurally, the matters were transferred from the erstwhile IPAB to the Delhi High Court following the 2021 Tribunal Reforms Ordinance

1. Whether the trademark ‘SOCIAL’ is generic/descriptive or suggestive and protectable within the hospitality industry.

2. Whether Choksi’s mark ‘SOCIAL HOUSE’ is liable for removal under Section 47(1)(b) for non-use for a period exceeding five years and three months.

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

4. Whether Choksi’s conduct of registering multiple international brands without use constitutes trademark squatting.

The court applied Section 47 of the Trade Marks Act, 1999, which provides for the removal of a mark from the register on the ground of non-use for five years and three months, and Section 47(3), which excuses non-use due to "special circumstances in the trade"

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

Regarding non-use, it followed Russell Corp Australia Pty Ltd. v. Shri Ashok Mahajan, holding that use must be genuine and within the relevant class of registration

For "special circumstances," it applied Akteibolaget Jonkoping Vulcan v. V.S.V. Palanichamy Nadar, which defines such circumstances as external forces beyond the trader's control, rather than voluntary acts or litigation precautions

The Court performed the "Imagination Test" and concluded that while ‘SOCIAL’ is a common word, its application to the hospitality industry is "suggestive" rather than "generic," as it requires a mental leap to connect the word to restaurant services

Regarding non-use, the Court found that Choksi failed to demonstrate genuine use of ‘SOCIAL HOUSE’ for restaurant services in Class 43; his evidence only showed use for organizing night events, which falls under Class 41

The Court rejected Choksi's defense under Section 47(3), ruling that ceasing use of a mark as a "precautionary measure" during litigation does not constitute "special circumstances in the trade," as it is a voluntary act and not an external force like a statutory bar

The Court observed that Choksi’s registration of over 100 international brands without corresponding use evidenced a pattern of "trademark squatting," which undermines the sanctity of the Register

The Court held that ‘SOCIAL’ is a protectable suggestive mark and that Choksi’s mark ‘SOCIAL HOUSE’ was wrongly remaining on the register due to non-use and a lack of bona fide intent

The Registrar of Trade Marks was directed to remove Choksi’s mark (Application No. 2230483 in Class 43) from the Register

No relief was granted to Choksi regarding Impressario’s registrations