Introduction:This case pertains to a rectification petition filed by Godai Global Inc., a South Korean company, under Section 57 of the Trade Marks Act, 1999 before the High Court of Delhi. The petition sought the removal of a device mark registered under application number 5635163 in Class 3 by the respondent, Shahnawaz Siddiqui. The primary contention of the petitioner was that the respondent had dishonestly registered an identical or deceptively similar mark to the petitioner’s well-established trademark, “Beauty of Joseon,” which is widely recognized in the global skincare market.

Factual Background of the Proceedings:Petitioner’s Business & Trademark UsageGodai Global Inc. is a South Korean entity engaged in the manufacture of Korean beauty and personal care products across 54 countries under the brand name "Beauty of Joseon."Since 2010, the company has been distributing skincare products such as serums, cleansing oils, sunscreens, and pore masks, inspired by traditional Korean beauty treatments. The petitioner registered its website (https://beautyofjoseon.com/) on March 2, 2017, making its products globally available, including in India via e-commerce platforms. Entry into the Indian Market & Opposition to Respondent’s MarkIn August 2022, the petitioner officially commenced exports to India. The petitioner applied for international trademark protection for its device mark in India, but in December 2023, the Trade Mark Registry issued a provisional refusal, citing lack of distinctiveness. During this process, the petitioner discovered that Respondent No. 1 (Shahnawaz Siddiqui) had registered an identical mark under application number 5635163 on October 3, 2022, on a ‘proposed to be used’ basis. Additionally, Respondent No. 1 also applied for registration of the word mark “Beauty of Joseon” under application no. 6236043. The petitioner opposed this application on March 7, 2024.

Proceedings in the Present Petition: The petition was filed under Section 57 of the Trade Marks Act, 1999, seeking removal of the registered device mark. The High Court issued notice on July 4, 2024, granting four weeks for Respondent No. 1 to file a reply. Despite service, the respondent did not file a reply or make an appearance. Consequently, the right to reply was closed on October 8, 2024, and the respondent was proceeded ex-parte on October 21, 2024 with an interim injunction granted in favor of the petitioner.

Petitioner’s Arguments (Godai Global Inc.): Bad Faith Registration: The respondent obtained the trademark dishonestly and in bad faith, intending to unlawfully benefit from the goodwill of the petitioner.Prior Use & Global ReputationThe petitioner’s device mark has been registered in approximately 30 countries and has been in use since 2010.Various international magazines have recognized and endorsed the petitioner’s products.Likelihood of ConfusionThe impugned mark is identical to the petitioner’s mark and is registered for similar goods (skincare products), creating a high likelihood of consumer confusion.

Legal Precedents Supporting Cancellation of the Mark: Kia Wang v. Registrar of Trademarks & Anr. (2023 SCC OnLine Del 5844)Held that where a mark is identical to a globally recognized brand, the registration must be canceled due to bad faith adoption.BPI Sports LLC v. Saurabh Gulati & Anr. (2023 3 HCC (Del) 164)Ruled that bad faith registrations made after a brand’s entry into the market warrant cancellation.Respondent’s Arguments (Shahnawaz Siddiqui & Anr.)No defense was presented, as the respondent did not appear before the Court.

Court’s Analysis & Findings: Failure of Respondent to Contest the CaseAs no reply was filed by Respondent No. 1, the Court deemed the averments made by the petitioner to be admitted in law. Comparison of the MarksA side-by-side comparison revealed that the impugned mark was nearly identical to the petitioner’s device mark.The Korean characters in the petitioner’s mark had no relevance to India, reinforcing that the respondent had copied the mark.Application of the ‘Bad Faith’ PrincipleFollowing the rulings in Kia Wang (supra) and BPI Sports (supra), the Court found that bad faith adoption was evident.The respondent’s actions constituted ‘trademark squatting’, which is prohibited under Section 11(10)(ii) of the Trade Marks Act, 1999.  Consumer Deception & Unfair AdvantageThe identical nature of the marks and their application in the same class of goods made consumer confusion inevitable. The Court emphasized that unauthorized registration of well-known international trademarks in bad faith is not permissible.

Decision: The Court allowed the rectification petition, directing the Trade Mark Registry to remove the impugned registered trade mark (No. 5635163) from the Register of Trade Marks.A copy of the order was sent to the Trade Mark Registry for compliance.

Concluding Note: This judgment reinforces the principle of bad faith adoption in trademark disputes. The ruling underscores that Indian courts will not tolerate ‘trademark squatting’ and will protect international brand owners from unfair advantage-seeking registrations.

Date of Order: January 28, 2025

Case No.: C.O. (COMM.IPD-TM) 81/2024 

Neutral Citation: 2025:DHC:649

Name of Court: High Court of Delhi

Presiding Judge: Hon’ble Mr. Justice Amit Bansal

High Court of Delhi

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