Case Title: Manash Lifestyle Pvt. Ltd. Vs. Shabina Kundial
Date of Order: 14th February, 2025
Case No.: C.O. (COMM.IPD-TM) 88/2024
Neutral Citation: 2025:DHC:1012
Court: High Court of Delhi
Judge: Hon'ble Mr. Justice Amit Bansal
Facts of the Case:
1. Petitioner’s Background: Manash Lifestyle Pvt. Ltd., incorporated in 2011, operates the online beauty and wellness store Purplle.com. It owns the FACES and FACESCANADA trademarks, acquired through a Share Purchase Agreement in 2021.
2. Trademark Rights: The FACES trademark was originally adopted in 1974 by the petitioner’s predecessor and registered in India in 2006. The brand has been extensively used and promoted through various marketing channels, including digital platforms and celebrity endorsements.
3. Discovery of the Infringing Mark: In June 2024, during a routine trademark search, the petitioner found that Shabina Kundial (Respondent No.1) had obtained registration for a mark incorporating "FACES" in Class 44 for beauty-related services. The registration was granted on 26th April, 2021.
4. Legal Action: Manash Lifestyle filed a rectification petition under Section 57 of the Trade Marks Act, 1999, seeking removal of the impugned mark from the Trade Marks Register.
Issues:
1. Whether Shabina Kundial’s trademark registration in Class 44 is deceptively similar to the petitioner’s FACES marks?
2. Whether the registration of the impugned mark was obtained dishonestly to ride on the goodwill of the FACES brand?
3. Whether the registration violates Sections 9, 11, and 18 of the Trade Marks Act, making it eligible for rectification?
Reasoning and Analysis by the Judge:
1. Absence of Defense: The respondent failed to file a reply or appear in court, leading to an ex-parte decision.
2. Similarity of Marks: The court compared the FACES marks and the impugned mark and found substantial resemblance, making it likely to cause confusion among consumers.
3. Precedent Cited: The court referred to Greaves Cotton Limited v. Mohammad Rafi (2011 SCC OnLine Del 2596), where it was held that even minor variations in a mark do not prevent infringement if the resemblance is substantial.
4. Bad Faith Adoption: The court concluded that Shabina Kundial had dishonestly adopted the petitioner’s mark to gain unfair advantage from its goodwill and reputation.
5. Violation of Trade Mark Law: The court found the respondent’s registration contrary to Sections 9 (absolute grounds for refusal), 11 (relative grounds for refusal), and 18 (application for registration) of the Trade Marks Act, making it liable for cancellation.
Decision of the Judge:
The rectification petition was allowed, and the impugned trademark (Application No. 4686526 in Class 44) was ordered to be removed from the Trade Marks Register.
The Trade Marks Registry was directed to implement the order and notify via email.
