‘Beauty of Joseon’ Highlights the Beauty of Intent
In the case of Goodai Global Inc v. Shahnawaz Siddiqu & Anr., before the Delhi High Court, Goodai Global Inc., the Petitioner, filed a Rectification Petition against Shahnawaz Siddiqu (Respondent No. 1) for the registration of its mark “Beauty of Joseon” wherein, the Court ruled in favor of the Petitioner, ordering the cancellation of the Respondent’s impugned mark from the Register of Trade Marks, deeming the same to be fraudulent and filed in bad faith. The Court highlighted that the Respondent's mark closely resembled the Petitioner’s established brand in both name and design, increasing the likelihood of consumer confusion. It also noted that Respondent had no valid reason to use Korean Hangeul characters, which are linked to a historic Korean dynasty and unrelated to India.
Facts
Goodai Global Inc., a South Korean entity known for its Korean beauty and skincare products under the brand name “Beauty of Joseon”, has been in operation since 2010 and has gained immense goodwill and reputation worldwide. In 2022, the Petitioner began exporting its products to India through various e-commerce platforms. In the present case, the Petitioner received a Notification of provisional refusal from the Trade Mark Registry (Respondent No. 2) against their Application for its mark. The Registry deemed the Petitioner’s mark as not distinctive, despite it being successfully registered in over 30 international jurisdictions. Upon investigation, the Petitioner discovered that Respondent No. 1 had already registered an identical word mark to that of the Petitioner’s prior and well-known, “Beauty of Joseon” mark, on a ‘proposed to be used’ basis.
Contentions of the Petitioner
The Petitioner contended that the impugned registration was obtained in bad faith by Respondent No. 1. The Petitioner emphasized that Respondent No. 1 had applied for the mark after the Petitioner had already entered the Indian market in 2022 and established substantial recognition for its brand. In contrast, Siddiqu allegedly adopted the mark in 2023, making the Petitioner, the prior user of the mark. The Petitioner further argued that the goods covered by the impugned mark were identical or highly similar to the goods under the Petitioner’s prior mark. Further, the points of purchase, trade channels, and consumers were also identical, thereby increasing the likelihood of confusion among consumers. The Petitioner highlighted that the Respondent’s intent appeared to be to cause confusion and capitalize on the goodwill associated with the Petitioner’s mark. The Petitioner had invested significant time, resources, and effort into promoting its device mark worldwide, including in India through various e-commerce platforms, where its skincare products were available. In light of these circumstances, the Petitioner submitted that the impugned mark had been wrongly entered in the Register of Trade Marks and should therefore be cancelled under Section 57 of the Trade Marks Act, 1999.
Analysis and Court’s Observations
The Court observed that the Petitioner, operating under the brand ‘Beauty of Joseon’ since 2010, had gained significant reputation and goodwill in the global market, including in India. The Petitioner had commenced sales of its products in India in August 2022, making them accessible to Indian consumers via e-commerce platforms. The Petitioner’s device mark, which incorporated Hangeul characters (‘Joseon Mi Nyeo’ and ‘Cracle In’), was well-known internationally, and its use had been endorsed by various international magazines.
Upon reviewing the submissions and comparing the Petitioner’s Device Mark with the Impugned Device Mark registered by Respondent No. 1, the Court found that the two marks were nearly identical.
The Petitioner’s mark featured black Hangeul characters (the Korean alphabet) with specific arrangements, complemented by a red square seal, whereas the impugned mark adopted similar elements, including the use of Hangeul and the same structure.
The Court further noted that the term ‘Joseon’, which references a historical Korean dynasty, had no specific connection to India or the Respondent’s business. It was, therefore, perplexing as to why Respondent No. 1 would adopt such a distinctive Korean mark when there was no apparent connection to their business activities. The Court held that the adoption of such a mark by Respondent No. 1 seemed to be an attempt to capitalize on the Petitioner’s established goodwill. Further, the Court noted that the Respondent did not file any response to the plea, indicating that he had nothing substantial to put forth on the merits of the case.
The Court found that the impugned mark was likely to cause confusion and deception among the average Indian consumers, particularly given the high level of recognition the Petitioner’s mark had acquired worldwide and in India. Thus, the mark was likely to cause confusion among ordinary consumers who may not be able to distinguish between the two marks due to their striking similarities. The Court cited the Kia Wang case, where a similar situation arose, and the registration was cancelled due to the bad faith of the Respondent. The same reasoning was applied in the present case, with the Court concluding that Respondent No. 1 had no legitimate reason to adopt a mark so similar to the Petitioner’s.
Judgment
The Court held that, “the impugned mark is likely to cause confusion and deception among the consumers who are ordinary persons of average intelligence and imperfect recollection, especially as the petitioner has been using the Petitioner’s device mark since the year 2010” . It found that the Respondent No. 1’s registration of the impugned mark was executed with the clear intent to appropriate the Petitioner’s device mark and block the Petitioner’s legitimate rights to register the mark in India. This act was categorized as trademark squatting, a practice of registering a trademark that is identical or similar to an existing trademark, with no intention of using it in commerce- which constitutes bad faith and falls under Section 11(10)(ii) of the Trade Marks Act, 1999. The failure of Respondent No. 1 to submit a response to the petition or appear in court was also seen as indicative of a lack of substantial defense on the merits of the case, further reinforcing the Court’s conclusion of bad faith.
Therefore, the Delhi High Court ruled in favor of the Petitioner, directing the Trade Mark Registry to remove the impugned registration from the Register of Trade Marks.
Conclusion
The present case is about marking beauty, where, ‘Beauty of Joseon’ just trade marked its territory quite literally. The case also highlights the need for brands to develop distinct and unique trademarks that are not merely imitative of other well-known brands, even if in foreign languages or scripts. This was one of the cases where silence was taken as an admission of bad faith and dishonest intention in the adoption of the impugned mark. The Delhi High Court’s ruling sets a vital precedent in safeguarding established brands from opportunistic individuals seeking to exploit their goodwill. It also underscores the need for genuine intent in trademark applications and enhances protection for international brands entering the Indian market. The decision highlights the importance of vigilance in tracking trademark registrations and taking swift legal action against fraudulent filings. By canceling the impugned mark, the Court reaffirmed that trademark law not only protects businesses but also ensures that consumers are not misled by confusingly similar marks.
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