The Delhi High Court has dismissed appeals filed by Haveli Restaurant and Resorts Limited against the registration of the trademarks ‘AMRITSAR HAVELI’ and ‘THE AMRITSAR HAVELI’, ruling that the word ‘HAVELI’ is generic, descriptive, and common to trade.
Justice Tejas Karia, presiding over the case, held that the Appellant could not claim exclusive rights over the word ‘HAVELI’ as it has become publici juris within the hospitality industry. The Court upheld the orders passed by the Registrar of Trademarks, finding no deceptive similarity between the competing marks when considered as a whole.
Summary of the Case
The dispute arose from two appeals filed by Haveli Restaurant and Resorts Limited (Appellant) under Section 91 of the Trade Marks Act, 1999, challenging the orders dated February 21, 2024, passed by the Registrar of Trademarks (Respondent No. 1). The Registrar had dismissed the Appellant’s opposition and allowed the registration of trademarks ‘AMRITSAR HAVELI’ and ‘THE AMRITSAR HAVELI’ in Class 43 in favor of Respondent No. 2. The High Court, after analyzing the rival contentions and the status of the trademark ‘HAVELI’, concluded that the Appellant failed to establish exclusive ownership over the word ‘HAVELI’ and dismissed the appeals.
Background
The Appellant, originally incorporated as M/s Asha Builders Private Limited in 1997, changed its name to Haveli Restaurant and Resorts Limited in 2009. They claimed to be a well-known player in the hospitality industry, running a restaurant under the brand ‘HAVELI’ in Jalandhar, Punjab, since 2001. The Appellant holds a registration for a device mark containing ‘HAVELI’ in Class 30 (dating back to 2001) and a word mark ‘HAVELI’ in Class 16.
Respondent No. 2 filed applications for the registration of ‘AMRITSAR HAVELI’ (Application No. 4263978) and ‘THE AMRITSAR HAVELI’ (Application No. 3913481) in Class 43 (services for providing food and drinks) in 2019 and 2018, respectively. The Appellant opposed these applications, alleging deceptive similarity and likelihood of confusion. The Registrar of Trademarks rejected the opposition, leading to the present appeals before the High Court.
Arguments of the Parties
Contentions of the Appellant: The Appellant argued that it is the prior user of the mark ‘HAVELI’ since 2001 and that the mark has acquired distinctiveness and reputation. The counsel for the Appellant submitted:
- The Impugned Marks are “deceptively similar/identical” to the Appellant’s mark, operating in the same hospitality sector (Class 43).
- The adoption of the mark by Respondent No. 2 was “dishonest” and intended to trade upon the goodwill of the Appellant.
- The Registrar failed to consider documentary evidence such as cash memos, sales records, and advertisements dating back to 2001.
- The word ‘HAVELI’ is part of the Appellant’s corporate name, constituting use as a brand name.
Contentions of Respondent No. 2: Senior Advocate Mr. J. Sai Deepak, appearing for Respondent No. 2, argued:
- The word ‘HAVELI’ is “descriptive in nature having a dictionary meaning in Hindi language,” rendering it non-distinctive under Section 9(1)(a) of the Act.
- The term is “common to trade” and publici juris, evidenced by numerous registered trademarks containing ‘HAVELI’ in the hospitality industry across India.
- The Appellant has “no right over the word ‘HAVELI’ as no one can be permitted to monopolize the same.”
- The Appellant suppressed material facts, including adverse orders where the Registrar had previously rejected the Appellant’s applications for the word mark ‘HAVELI’ on grounds of non-distinctiveness.
- The Appellant had taken “inconsistent and untenable stands” by relying on phonetic and visual differences to overcome objections in its own trademark applications while arguing similarity in the present opposition.
Court’s Analysis
The Court formulated the core issue as whether the Appellant has an exclusive right over the mark ‘HAVELI’ and whether the mark is generic.
1. No Exclusive Right over ‘HAVELI’: The Court observed that the Appellant does not possess a registration for the word mark ‘HAVELI’ in Class 30 (food products) or Class 43 (services). The Appellant’s registration in Class 30 is a Device Mark, and the registration in Class 16 relates to paper goods. Justice Karia noted:
“The Appellant has not been able to establish ownership over the Mark ‘HAVELI’ in absence of the registration of Word Mark ‘HAVELI’ or any ‘HAVELI’ formative Marks in Class 30… It is clear that there is no registration over the Mark ‘HAVELI’ per se in favour of the Appellant for Class 30.”
The Court further pointed out the Appellant’s contradictory stance. In previous proceedings, to secure its own registrations, the Appellant had argued that its ‘HAVELI’ formative marks were distinct from prior citations. The Court held:
“The Appellant cannot claim exclusive ownership over the Mark ‘HAVELI’ as admittedly there are prior registrations having ‘HAVELI’ as part of the said registrations which have co-existed with the Appellant’s Marks.”
2. ‘HAVELI’ is Generic and Common to Trade: Accepting the Respondent’s argument, the Court held that ‘HAVELI’ is a generic word with a dictionary meaning—a traditional townhouse or mansion—and is widely used in the trade. The Court listed numerous third-party registrations using ‘HAVELI’ (e.g., ‘Lal Haveli’, ‘Punjabi Haveli’, ‘Royal Heritage Haveli’) which the Appellant had not challenged. The Court observed:
“The Mark ‘HAVELI’ is descriptive in nature… Hence, ‘HAVELI’ is publici juris and common to trade and is not uniquely identifiable with a particular goods or services of the Appellant.”
3. No Deceptive Similarity: Applying the ‘anti-dissection rule’, the Court compared the marks as a whole. It found that the prefix ‘AMRITSAR’ in the Respondent’s marks sufficiently distinguished them from the Appellant’s device mark.
“The Appellant’s Marks and the Impugned Marks if considered as a whole cannot be held to be deceptively similar and are able to be distinguished by the use of word ‘AMRITSAR’.”
Cited Precedents: The Court relied on the following judgments explicitly discussed in the analysis:
- Vasundhara Jewellers Private Limited v. Kirat Vinodbhai Jadvani & Anr.: To support the finding that when a generic mark is part of a composite mark, one cannot claim exclusive monopoly over the generic part.
- Ganesh Gouri Industries v. R.C. Plasto Tanks & Pipes (P) Ltd.: Regarding the ‘anti-dissection’ rule, reaffirming that commercial impression is created by the mark as a whole.
- Cadila Healthcare Limited v. Gujarat Cooperative Milk Marketing Federation Limited & Ors. (Sugar Free case): Discussed regarding the descriptive nature of marks and the requirement to tolerate some confusion when adopting descriptive terms.
- People Interactive (India) Private Limited v. Vivek Pahwa & Ors.: Cited regarding the acquisition of ‘secondary meaning’ and the risk involved in using common phrases.
Decision
The High Court dismissed the appeals, upholding the Registrar’s decision to register ‘AMRITSAR HAVELI’ and ‘THE AMRITSAR HAVELI’.
Justice Tejas Karia concluded:
“The Appellant has no exclusive rights over the Mark ‘HAVELI’ as the same is generic in nature and common to the trade. There is no deceptive similarity between the Appellant’s Marks and the Impugned Marks and the Impugned Orders have rightly rejected the opposition by the Appellant…”
No orders were made as to costs.
