Not Uncommon For Today's Customer To Cross Check Origin Of Products & Particulars Of Brand: Delhi HC Refuses Interim Injunction To 'Forest Essential'

The Delhi High Court has dismissed a plea seeking an interim injunction filed by skincare and cosmetics brand "Forest Essentials". The plea aimed to restrain another brand from utilizing the marks "Baby Forest" and "Baby Forest-Soham of Ayurveda" in the sale of baby care products.

The Single-Judge Bench of Justice Anish Dayal emphasizing the generic nature of the term 'Forest' and Forest Essentials' failure to secure dominance over it through trademark registration under Section 17(2) of the Trademark Act.

The Court remarked, "For plaintiff to claim monopoly over the mark ‘FOREST’, which is itself a commonly used word, therefore may not be tenable." However, the undertaking by the defendant company, Baby Forest, to refrain from using the marks 'SAUNDARYA' and 'BABY ESSENTIALS' will remain in effect.

The trademark infringement suit was initiated by Mountain Valley Springs India Private Limited, the parent company of Forest Essentials. It aimed to prohibit the defendants from employing the marks 'BABY FOREST,' 'BABY FOREST–SOHAM OF AYURVEDA,' 'BABY ESSENTIALS,' and 'SAUNDARYA POTLI.'

Rejecting the interim injunction application, the Court highlighted that Forest Essentials' sales figures, amounting to Rs. 15 crores, compared to the defendants' Rs. 2.26 crores, did not grant them the authority to appropriate any mark associated with the term 'FOREST.'

Additionally, the Court underscored Forest Essentials' lack of registration for 'FOREST ESSENTIAL BABY' and 'FOREST ESSENTIALS-BABY ESSENTIALS.'

The Court further emphasized that a few social media references were insufficient to demonstrate "widespread confusion" among consumers or the likelihood thereof. It stressed the pervasive impact of the digital retail revolution, particularly in urban and semi-urban areas, citing India's substantial smartphone user base of approximately 450 million individuals.

"In the opinion of this Court, these factors now also have to be considered as well rather than applying just the traditional 1960s test in an isolated manner and without accounting for the new channels and consumer journey towards purchase. The new digital revolution in retail is obvious, and does not need to be articulated, since it envelops and involves most consumers, at least in the urban and semi-urban areas. With approximately 450 million smartphone users in India, the ability to access information is very high and prevalent, and while understanding the mindset of the consumer, this must be brought into the consideration," the Court said. 

The Bench further stated that in respect of baby care products, the purchasers are parents, who will be very careful about picking the right product for their baby and, therefore, are much more alert of the product/brand that they choose to buy. The Court said, "In today's world, where a substantial amount of retail purchase is through online medium, 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., 2023 SCC OnLine Del 2269."

"Confusion, therefore, if at all at the initial stage may not subsist for very long and may be ephemeral, transient, since even an average customer will be prompted to check. The journey of the consumer is a new consumer journey starting from awareness to information to purchase. There is a changing landscape of consumer behavior which is duly recognized by various authoritative advertising publications / commentaries on brands and consumer behavior," the Bench said. 

"The plaintiff is not entitled to the injunction it seeks against the defendants for use of the marks ‘BABY FOREST’, ‘BABY FOREST– SOHAM OF AYURVEDA’, and the instant applications being I.A. 14373/2023 and I.A. 21648/2023 under Order XXXIX Rules 1 and 2 of CPC are dismissed to that extent," the Court ordered. 

Cause Title: Mountain Valley Springs India Private Limited v. Baby Forest Ayurveda Private Limited [Neutral Citation: 2024:DHC:4053]

Appearance:-

Plaintiff: Senior Advocate Amit Sibal, Advocates Essenese Obhan, Swathi Sukumar, Ayesha Guhathakurta, Yogita Rathore, Anjuri Saxena

Defendant: Senior Advocate Jayant Mehta, Advocates Sudeep Chatterjee, Rohan Swarup, Tanya Arora, Jaydeep Roy, Udit Dedhiya

Click here to read/download the Judgment