Delhi High Court Denies Interim Relief To Forest Essentials In Trademark Dispute With Baby Forest

Delhi High Court Denies Interim Relief To Forest Essentials In Trademark Dispute With Baby Forest

The Delhi High Court recently denied interim relief to Forest Essentials, an Ayurvedic cosmetics, skincare, and perfume company, in a Trademark dispute against Baby Forest, a company specializing in Ayurvedic baby care products.

Justice Anish Dayal noted that the term 'forest' is generic, and Forest Essentials could not assert exclusive rights over this part of its trademark without registering it separately.

"The word 'FOREST' is generic, and the plaintiff cannot claim dominance over this part of their trademark without seeking registration under Section 17(2) of the Act. Reliance is placed on the decision in Vardhman Buildtech Pvt. Ltd. v. Vardhman Properties Ltd., which held that registration does not confer exclusive rights in part of the mark," stated the order dated May 15.

Furthermore, the Court noted that, in response to an examination report, Forest Essentials had argued that the uniqueness lay in the combination of 'Forest' and 'Essentials.'

"Having achieved reputation in a unique combination of these two words, which are uniquely coined, the ‘anti-dissection rule’ would therefore have to apply against the plaintiff," the Court said.

The Court was hearing an application for an interim injunction by Forest Essentials against Baby Forest in a trademark dispute case filed last year.

Senior Advocate Amit Sibal contended that there was confusion between the products of the companies. To support his argument, he presented images and referenced an email from a customer, an Instagram comment from another customer, a Google search query asking 'Is Baby Forest the same as Forest Essentials?', and emails from the Oberoi and Hyatt Hotels.

Baby Forest highlighted that the plaintiff's trademark was registered as 'Forest Essentials' and not as 'Forest Essentials Baby' or 'Forest Essentials-Baby Essentials'.

He further added that even when Forest Essentials used the word 'baby' for its baby-care products, it was solely to describe the intended purpose of the goods and not as a trademark.

Baby Forest emphasized that Forest Essentials filed for the registration of the mark 'Forest Essentials Baby' only after the Court refused to grant an order of injunction on August 9, 2023.

He further emphasized that Baby Forest exclusively sells baby care products, whereas baby care products constitute only a small part of Forest Essentials' product catalog.

The court observed that although Forest Essentials claimed ownership of the marks 'Forest Essential Baby' and 'Forest Essentials-Baby Essentials', the company had not applied to register these marks until after the court rejected its request for interim relief last year.

The court observed that Forest Essentials used the words 'Baby' and 'Baby Essentials' merely as descriptive terms.

Regarding the alleged deceptive similarity between the products of both companies, the court noted significant dissimilarities in the packaging and logos of the products.

The court added that a few social media references are insufficient to demonstrate "widespread confusion" or the likelihood of such confusion. Additionally, it opined that a Google search suggestion alone does not adequately establish confusion, as Google algorithms consider various factors.

The court further observed that the emails from Oberoi and Hyatt Hotels were notably dated after Baby Forest had replied to a cease-and-desist notice sent by Forest Essentials.

The Court held that Forest Essentials cannot obtain an injunction against Baby Forest based on the slight possibility of minor, transient confusion among consumers.

The Court noted that parents, who are the purchasers of baby care products, are diligent in selecting the right product for their baby, making them more attentive.

"In today's world, where a substantial amount of retail purchase is through online mediums, it is not uncommon for a customer to cross-check the origin of the products and the particular brand that they are seeking to purchase, even if they are faced with a 'state of wonderment' as articulated in Under Armour Inc. v. Aditya Birla Fashion and Retail Ltd," it added.

Thus, the Court dismissed Forest Essentials' application for an interim injunction and scheduled the matter for further hearing before the Joint Registrar on July 10th.