Delhi High Court - Orders
Impresario Entertainment & ... vs M/S. Social Chai Through Its Proprietor on 22 March, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~59
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 258/2024
IMPRESARIO ENTERTAINMENT & HOSPITALITY PVT. LTD.
..... Plaintiff
Through: Ms. Shikha Sachdeva and Ms. Kriti
Rathi, Advocates.
versus
M/S. SOCIAL CHAI THROUGH ITS PROPRIETOR ..... Defendant
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 22.03.2024 I.A. 6834/2024 (seeking leave to file additional documents)
1. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015.
2. If the Plaintiff wishes to file additional documents at a later stage, it shall do so strictly as per the provisions of the said Act.
3. Disposed of.
I.A. 6835/2024 (seeking exemption from filing original documents)
4. Exemption is granted, subject to all just exceptions.
5. Plaintiff shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
6. Disposed of.
CS(COMM) 258/2024 Page 1 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/03/2024 at 22:06:48 I.A. 6836/2024 (seeking exemption from pre-institution mediation and settlement)
7. As the present suit contemplates urgent interim relief, in light of the judgment of Supreme Court in Yamini Manohar v. T.K.D. Krithi,1 exemption from attempting pre-institution mediation is granted.
8. Disposed of.
I.A. 6837/2024 (seeking exemption from advance service)
9. The Plaintiff seeks urgent interim relief to restrain the Defendant from infringing the Plaintiff's registered trademark. It is contended that despite Defendant's earlier promise and assurance to cease the use of the impugned trademark, they have not only persisted in operating their existing restaurant/outlet, but have also recently inaugurated an additional outlet under the same trademark, emphasising the need for immediate ex-parte action. Given the peculiar facts and urgent nature of this case, the exemption from the requirement of advance service upon the Defendants, as sought by the Plaintiff, is granted.
10. The application is allowed and disposed of.
CS(COMM) 258/2024
11. Let the plaint be registered as a suit.
12. Upon filing of process fee, issue summons to the Defendant by all permissible modes. Summons shall state that the written statement shall be filed by the Defendant within 30 days from the date of receipt of summons. Along with the written statement, Defendant shall also file an affidavit of 1 2023 SCC OnLine SC 1382.
CS(COMM) 258/2024 Page 2 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/03/2024 at 22:06:48 admission/denial of the documents of Plaintiff, without which the written statement shall not be taken on record.
13. Liberty is given to the Plaintiff to file a replication within 15 days of the receipt of the written statement. Along with the replication, if any, filed by the Plaintiff, an affidavit of admission/denial of documents of the Defendant, be filed by the Plaintiff, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
14. List before the Joint Registrar for marking of exhibits on 24th May, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
15. List before Court for framing of issues thereafter.
I.A. 6833/2024 (u/O XXXIX Rules 1 and 2 of CPC)
16. Ms. Shikha Sachdeva, counsel for Plaintiff, presents the following facts and contentions:
16.1. The present suit has been instituted by the Plaintiff to restrain the Defendant from infringing their registered trademark "SOCIAL" and related formative marks. The infringement claim arises from Defendant's use of "SOCIAL CHAI"/ " " and similar marks in the operation of restaurants and the provision of food and drink services, which directly competes with the Plaintiff's business. The Plaintiff alleges that this constitutes not only a violation of their trademark rights but also amounts to passing off and unfair trade competition, given the identical nature of the CS(COMM) 258/2024 Page 3 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/03/2024 at 22:06:49 businesses involved.
16.2. Since 2001, the Plaintiff has been engaged in providing restaurant services, including but not limited to the operation, conduct, and management of restaurants and coffee shops. These establishments are operating under the trademark "SOCIAL", which is the subject matter of this lawsuit.
16.3. The "SOCIAL" trademark was first adopted by the Plaintiff during the 2011-12 period, with the inaugural "SOCIAL" restaurant opening its doors in Bengaluru in 2014. The Plaintiff has secured several registrations for the "SOCIAL" trademark and their derivative marks across various classes, with the earliest registration recorded on 21st August, 2012. The details of the Plaintiff's trademark registrations are comprehensively outlined in paragraph No. 12 of the plaint.
16.4. Plaintiff also claims copyright in the artistic work
" " which comprises of the word "SOCIAL" in
orange color and in a stencil font.
16.5. Over the years, Plaintiff has opened multiple "SOCIAL" restaurants in various cities. At present, there are 50 "SOCIAL" restaurants/bars operating pan India, the details whereof are set out in paragraph No. 9 of the plaint.
16.6. The interior design of each "SOCIAL" restaurant/ bar has a different theme, which has become exclusively associated only with Plaintiff. At these restaurants, Plaintiff also displays crockery and merchandise bearing the trademark "SOCIAL" which can be purchased by the customers. The Plaintiff has also commenced selling wine under its "SOCIAL" trademark CS(COMM) 258/2024 Page 4 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/03/2024 at 22:06:49 which are available for sale at its restaurants and bars in Mumbai. 16.7. Since the commencement of their business operations, the Plaintiff has been continuously and uninterruptedly using the trademark and tradename "SOCIAL" with respect of its goods and restaurant services. For promotion of their products and restaurant, the Plaintiff has developed a website under their trademark "www.socialoffline.in" and also through their group/corporate website "https://impresario.in". Additionally, the Plaintiff has substantial presence in social media that has been delineated in paragraph No. 19 of the plaint. Their restaurants are also listed on several third-party restaurant search engine guides such as Zomato, Swiggy, Dineout, Eazydiner etc. Therefore, the Plaintiff has successfully built a strong goodwill and reputation in the market, a fact substantiated by the impressive turnover generated from the "SOCIAL" brand, amounting to INR 3,67,0543,508/- for the financial year 2022-23. The financial achievements are detailed in paragraph No. 23 of the plaint. Additionally, the substantial promotional expenses undertaken by the Plaintiff to promote the "SOCIAL" brand are itemized in paragraph No. 22 of the plaint, highlighting the Plaintiff's commitment to maintaining and enhancing the brand's visibility and market presence.
16.8. The Plaintiff has been taking all steps to protect its trademark rights whenever they come across infringing use of the said marks. The details of legal actions initiated by the Plaintiff for protection of their "SOCIAL" trademark have been provided in paragraph No. 25 of the plaint. 16.9. In May, 2022, Plaintiff discovered the use of the trademark "SOCIAL CS(COMM) 258/2024 Page 5 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/03/2024 at 22:06:49 CHAI"/ " " ["Impugned Trademarks"] by the Defendant in Kanpur, Uttar Pradesh for operating a restaurant/cafe. Upon conducting a thorough search on the internet, Plaintiff found that the Defendant is advertising the said restaurant bearing the Impugned Trademarks through third-party restaurant search engines including Zomato, Swiggy and Restaurant Guru, social networking platforms and third-party websites like Magicpin, Justdial, Linktree, Google Maps etc. Further, on conducting a search in Trademark Registry, Plaintiff was apprised of Defendant's application for registration of the mark " " under application No. 5181254 in Class 43. Thereafter, Plaintiff issued a cease-and-desist notice dated 19th May, 2022 demanding immediate cessation of Plaintiff's mark as part of their trademark/tradename and to withdraw their trademark application No. 5181254 for the mark " ". On failure to receive any response, Plaintiff issued a follow up notice on 23rd December, 2022 to which the Defendant responded on 14th January, 2023 whereby they agreed to discontinue use of the Impugned Trademarks. The said communication reads as follows:
CS(COMM) 258/2024 Page 6 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/03/2024 at 22:06:49 CS(COMM) 258/2024 Page 7 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/03/2024 at 22:06:49 16.10. However, in February 2024, the Plaintiff discovered that, contrary to the Defendant's previous communications and assurances to cease the use of the disputed trademark, a second outlet has been inaugurated in Keshavpuram, Kanpur, Uttar Pradesh, operating under the trademark "SOCIAL CHAI".
16.11. The Impugned Trademarks bear an identical or deceptively similar resemblance to the Plaintiff's "SOCIAL" trademark. Defendant's explicit intention is to mislead consumers, by suggesting that their restaurant CS(COMM) 258/2024 Page 8 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/03/2024 at 22:06:49 is associated with or is operating under the Plaintiff's brand. This action not only aims to pass off the Defendant's services as that of the Plaintiff's but also constitutes a direct infringement of the Plaintiff's registered trademark.
17. The Court has considered the aforenoted contentions. A comparison of the Plaintiff's "SOCIAL" trademark and the Impugned Trademarks of the Defendant, is as follows:
Plaintiff's Trade Marks Defendant's Manner of Use
SOCIAL SOCIAL CHAI
18. As can be viewed from the above comparison chart, there are several points of similarities and convergence between the Impugned Trademarks and the Plaintiff's trademarks. Defendant has appropriated the "SOCIAL" from the Plaintiff's trademark, incorporating it entirely into their Impugned Trademarks. The addition of the suffix "CHAI" to "SOCIAL" is, in the Court's prima facie assessment, insufficient to effectively differentiate the Defendant's mark from that of the Plaintiff's. The similarities between the two marks extends beyond mere visual resemblance, considering that both trademarks are utilized within the identical domain of restaurant services. Consequently, the Court is inclined to conclude that the Defendant's utilization of the "SOCIAL" in the Impugned Trademarks bears a significant CS(COMM) 258/2024 Page 9 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/03/2024 at 22:06:49 risk of misleading consumers, and create association with the Plaintiff's mark.
19. In view of the above, the Court finds that the Plaintiff has made out a prima facie case in his favour and in case no ex-parte ad-interim injunction is granted, the Plaintiff will suffer an irreparable loss; balance of convenience also lies in favour of Plaintiff and against the Defendant.
20. Accordingly, till the next date of hearing, following directions are issued:
i. The Defendant or anybody acting on their behalf is restrained from marketing, advertising and/or offering its services and/or in any other manner under the Impugned Trademarks "SOCIAL CHAI"/ " "
and/or any other trademark or name identical or similar to the Plaintiff's trademark "SOCIAL" and its variants either as, a trademark or a tradename or corporate name or as a part of a domain name, or in any other manner whatsoever so as to infringe and/ or pass off the Plaintiff's registered trademarks, and/ or pass off the copyright of the Plaintiff in the said trademarks.
ii. The Defendant shall remove all references of the Impugned Trademarks from all third-party websites where the Defendant's goods and/or services are sold, offered for sale, promoted and/or advertised under the Impugned Trademarks "SOCIAL CHAI"/ " " and/or "SOCIAL"
and/or any other trademarks deceptively similar to the Plaintiff's trademarks.
CS(COMM) 258/2024 Page 10 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/03/2024 at 22:06:49
21. Compliance of Order XXXIX Rule 3 of CPC be done with one week from today. Issue notice to the Defendant by all permissible modes, upon filing of process fee, returnable on next date of hearing. Reply, if any, be filed within four weeks from date of service. Rejoinder thereto, if any, be filed within two weeks thereafter.
22. List before the Court on 23rd August, 2024.
SANJEEV NARULA, J MARCH 22, 2024 d.negi CS(COMM) 258/2024 Page 11 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/03/2024 at 22:06:49