Delhi High Court: In an application filed by the plaintiff seeking an ex-parte ad interim injunction against the defendant, Saurabh Banerjee, J., stated that the defendant could not be allowed to exploit the goodwill and reputation of the already existing registered trade mark ‘SOCIAL’ of the plaintiff, and the defendant’s continued usage of the impugned marks was not warranted.
Thus, till the next date of hearing, the Court restrained the defendant and any other acting on its behalf from marketing, advertising and/or offering its services and/or in any other manner using and/or allowing or permitting third parties to market, advertise and/or use the trade mark ‘SOCIAL’ and/or any mark or name identical and/or similar to the plaintiff’s trade mark ‘SOCIAL’ in any manner.
Background
Impresario Entertainment and Hospitality Private Limited-the plaintiff commenced its business in 2001 and had opened various well-known and award-winning restaurants under different names including ‘SOCIAL’. The plaintiff was engaged in providing restaurant services, including conducting and managing restaurants and coffee shops, operating restaurants and coffee shops and providing expertise relating to provision of food and drink. In 2011-2012, the plaintiff thought of a unique concept of blending the best of office and cafe by offering to the public a collaborative workspace and a multi cuisine and trade mark ‘SOCIAL’ was adopted in respect of such cafes. The first ‘SOCIAL’ restaurant/ bar of the plaintiff was opened in 2014 in Bengaluru.
The plaintiff coined the trade marks according to the area of the city in which the ‘SOCIAL’ restaurants/ bars was being opened, to indicate to the general public the area in which the cafe was situated. For eg. 
, 
, 
, 
, etc.
The plaintiff owned and operated an exclusive website at www.socialoffline.in. The plaintiff also advertised all its restaurants, including ‘SOCIAL’ restaurants/bars on its group/corporate website https://impresario.in and was also popular on various social media with large number of followers. The plaintiff’s restaurants were also listed on several third-party restaurant search engine guides such as Zomato, Swiggy, Dineout, Eazydiner etc.
Whereas the defendant ran a restaurant/ café under the trade mark ‘SOCIAL AFFAIR’ / ‘
’ in Vadodara, Gujarat. In January 2020, the plaintiff’s attention was drawn towards the fact that defendant was operating a restaurant/ café under the impugned trade mark(s) ‘SOCIAL AFFAIR’/
, and was offering food delivery for a wide variety of cuisine, beverages and desserts at its outlet in Vadodara, Gujarat.
The plaintiff submitted that it had filed its opposition to the mark ‘
’ and had also issued a cease-and-desist notice to the defendant. Meanwhile, the plaintiff had also filed various complaints with the Facebook, Instagram and Zomato, requesting them to takedown the impugned mark. The plaintiff submitted that the use of the impugned marks by the defendant was causing confusion and deception to the customers of the plaintiff pan India including Delhi and also damaging the plaintiff’s business.
Comparative marks of the parties:
Analysis, Law, and Decision
The Court stated that the comparison between the parties’ marks reflected that the defendant had adopted an identically similar mark as that of the plaintiff’s registered trade mark ‘SOCIAL’ in its entirety by merely adding a suffix ‘AFFAIR’ to it. Under these circumstances, the defendant had dishonestly adopted and was wrongly using the impugned marks, with a sole intention to come as close as possible to the plaintiff and to ride upon the plaintiff’s goodwill and reputation.
The Court stated that the defendant had adopted and continued the use of the impugned marks, without any justifiable cause and/or reasons as also without seeking any permission and/ or authority from the plaintiff. The defendant had no reason to choose a mark with the trade mark ‘SOCIAL’ of the plaintiff. By doing so, the defendant was trying to portray that the plaintiff, who has an all-India presence, was now in Vadodara, Gujarat. The same was likely to cause unwanted confusion and deception amongst the public at large.
The Court stated that since the plaintiff was the prior adopter, owner and registrant of the trade mark ‘SOCIAL’ and its formatives, it had a right for seeking protection. In fact, the manner of adoption by the defendant in merely adding a suffix to the trade mark ‘SOCIAL’ of the plaintiff was in no way decipherable and/or distinguished separately to show that it was not associated with the plaintiff. The Court stated that an average consumer with an imperfect recollection was likely to be deceived into thinking that the plaintiff had opened a new ‘SOCIAL’ outlet in Vadodara, Gujarat where the defendant was operating its outlet.
The Court stated that as the defendant was operating in the same field of restaurant and hospitality services, dealing with the same kind of operatives and catering to the same set of customers, and considering that the plaintiff had an all-India presence, it could not be disputed that the defendant was not aware of the plaintiff, its wide fame and repute. The Court stated that the defendant could not be allowed to exploit the goodwill and reputation of the already existing registered trade mark ‘SOCIAL’ of the plaintiff, and the defendant’s continued usage of the impugned marks was not warranted.
The Court stated that the plaintiff had made out a prima facie case with the balance of convenience for grant of an ad interim ex-parte injunction in its favour. Thus, till the next date of hearing, the Court restrained the defendant and any other acting on its behalf from marketing, advertising and/or offering its services and/or in any other manner using and/or allowing or permitting third parties to market, advertise and/or use the trade mark ‘SOCIAL’ and/or any other trade mark or name identical and/or similar to the plaintiff’s trade mark ‘SOCIAL’ in any manner.
The matter would next be listed on 16-01-2025.
[Impresario Entertainment and Hospitality (P) Ltd. v. Star Hospitality, 2024 SCC OnLine Del 6289, decided on 27-08-2024]
Advocates who appeared in this case :
For the Plaintiff: Shikha Sachdeva, Kriti Rathi and Annie Jacob, Advocates.
