No interim relief to Forest Essentials in trademark fight against Baby Forest in Delhi HC

NEW DELHI: The Delhi High Court has refused to grant interim relief to luxury Ayurvedic beauty brand 'Forest Essentials' in a trademark litigation against Ayurvedic baby care products company 'Baby Forest'.

The Court said that 'forest' being a generic term, Forest Essentials could not claim dominance over a part of its registered trademark, without registering the said part separately.

"The word ‘FOREST’ in itself is generic and plaintiff cannot claim dominance over the said part of their trademark having not sought registration under Section 17 (2) of the Act. Reliance is placed on the decision in Vardhman Buildtech Pvt. Ltd. v. Vardhman Properties Ltd., 2016 SCC OnLine Del 4738, where it has been held that registration does not confer exclusive right in part of the mark," the order dated May 15 stated.

The other reasons the Court gave for rejecting Forest Essentials' plea for interim injunction included that Forest Essentials was claiming proprietorship of marks which it had in the first place not sought to register until being denied protection by the Court last year.

This included the marks 'Forest Essential Baby' and 'Forest Essentials-Baby Essentials'.

The Court also accepted Senior Advocate Jayant Mehta's aruments for Baby Forest that the words 'Baby' and 'Baby Essentials' were merely descriptive, and that the products' packaging and logos were substantially dissimilar.

Rejecting Senior Advocate Amit Sibal's argument for Forest Essentials that the products were deceptively similar because an Instagram user had made a comment asking if the brands are the same, the Court said, "A couple of social media references are not enough to show that there is ‘widespread confusion’ or likelihood of the same".

It added that a mere “Google search suggestion” was also not enough to show ‘confusion’ being caused in trademarks.

Further, it held that in any case, a slight possibility of minor, transient confusion cannot give Forest Essentials a right to injunctive relief.

"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," it added.

The Court also relied on the fact that Forest Essentials had earlier taken the stand that there was ‘uniqueness in using 'Forest' and 'Essentials' together’, therefore it could not dissect the phrase now to claim trademark rights over both the words.

“The ‘anti-dissection rule’ would have to apply against the Plaintiff," the Court said.

The Court has listed the matter for further hearing on July 10.
The Court was hearing an application for interim injunction by Forest Essentials against Baby Forest in a trademark dispute suit filed last year.

Senior Advocate Amit Sibal argued that there was confusion between the products of the companies, inter alia pointing out an Instagram comment by another customer, and a Google search suggestion saying “Is baby forest and forest essentials the same?”.

Senior Advocate Jayant Mehta represented Baby Forest and pointed out that the plaintiff's mark was 'Forest Essentials' and not 'Forest Essentials Baby' or 'Forest Essentials-Baby Essentials'.

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

Further, he underlined that Baby Forest exclusively sells baby care products while baby care products are only a small part of Forest Essentials' catalogue of products.

Senior Advocate Amit Sibal was assisted by advocates Essenese Obhan, Swathi Sukumar, Ayesha Guhathakurta, Yogita Rathore and Anjuri Saxena.

Senior Advocate Jayant Mehta was assisted by advocates Sudeep Chatterjee, Rohan Swarup, Tanya Arora, Jaydeep Roy and Udit Dedhiya.

Cause Title: Mountain Valley Spring India Pvt Ltd v Baby Forest Ayurveda Pvt Ltd