The petitioner, Manash Lifestyle Private Limited, a prominent player in the online beauty retail space through its platform PURPLLE.COM, sought the rectification and removal of the respondent’s trademark FACES BY SHELINA KUNDIAL from the Register of Trade Marks. The dispute centred on the alleged infringement of the petitioner’s well-established FACES and FACESCANADA marks, which it had acquired through a Share Purchase Agreement in December 2021 from its predecessor, Faces Cosmetics, Inc.
The petitioner’s case was built on its long-standing association with the FACES mark, which had been in use since 1974 and formally introduced in the Indian market in 2009. The mark had gained substantial recognition through extensive use in cosmetic products and beauty services, supported by registrations dating back to 2006 across multiple classes. The petitioner emphasised its significant investments in brand promotion, including celebrity endorsements, multi-platform advertising, and a strong online presence through its websites and third-party e-commerce platforms. Additionally, the petitioner highlighted its legal efforts to protect the mark, including a successful 2008 lawsuit against Chalhoub Group Limited, where the court restrained the defendant from using any mark containing the word FACES.
The respondent, Shabina Kundial, had obtained registration for the mark FACES BY SHELINA KUNDIAL in Class 44, covering services such as depilatory waxing, hairdressing salons, health spas, manicuring, massage, and beauty care. The registration was filed on a “proposed to be used” basis in October 2020 and granted in April 2021. The petitioner discovered this registration during a routine search in June 2024 and promptly filed the present rectification petition, arguing that the respondent’s mark was deceptively similar to its own and would likely cause confusion among consumers.
The court’s analysis focused on three critical aspects: the petitioner’s prior rights, the deceptive similarity between the marks, and the likelihood of consumer confusion. The petitioner demonstrated its prior and continuous use of the FACES mark since 2009, backed by substantial sales, promotional activities, and legal protections. The court noted that the mark had acquired distinctiveness and was exclusively associated with the petitioner in the minds of consumers. In contrast, the respondent’s mark, which incorporated the entirety of the petitioner’s FACES mark with the addition of “BY SHELINA KUNDIAL,” was found to be overwhelmingly similar. The court referenced the precedent set in Greaves Cotton Limited vs Mohammad Rafi (2011), which established that minor additions to a registered mark do not negate infringement if the dominant element remains identical or confusingly similar.
The court emphasised that the respondent’s failure to appear or contest the petition was indicative of a lack of bona fide claim to the mark. This absence of defence allowed the court to deem the petitioner’s averments as admitted, further strengthening the case for rectification. The court also considered the overlapping nature of the services offered under both marks, noting that the respondent’s use of FACES in connection with beauty and wellness services would inevitably lead to consumer confusion. The petitioner’s established reputation and goodwill in the FACES mark meant that any similar use by another party would likely mislead consumers into believing an association with the petitioner.
In its ruling, the court ordered the cancellation of the respondent’s trademark registration and directed the Trade Marks Registry to remove the mark FACES BY SHELINA KUNDIAL from the register. The decision testaments the importance of protecting prior trademark rights against subsequent registrations that could dilute or exploit the established goodwill of a well-known mark.
The case sets a significant precedent for trademark disputes in India, particularly in industries where brand identity and consumer perception are paramount. It reinforces the principle that the first user of a mark enjoys superior rights, and subsequent registrations that incorporate the dominant elements of a prior mark are vulnerable to cancellation. The ruling also serves as a reminder to businesses to conduct thorough trademark searches and ensure their marks do not infringe on existing rights, thereby avoiding costly legal battles and potential reputational damage.