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Synopsis

The Delhi High Court, recently, denied interim injunction to Forest Essentials for the phrase ‘Baby Forest’. The court referred to the 'Pianotist test' and emphasized evaluating customer behavior and surrounding circumstances.

The bench of Justice Anish Dayal held, “In view of the facts and circumstances stated above, in the opinion of this Court, 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”. 

An application was filed under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking an interim injunction as part of a suit for a permanent injunction to restrain individuals and those acting on their behalf from directly or indirectly infringing the trademarks ‘Forest Essentials’, ‘Baby Essentials’, ‘Forest Essentials-Baby Essentials’, ‘Luxurious Ayurveda’, and ‘Soundarya’ or any other deceptively similar trademark.

Forest Essentials also sought a permanent injunction to prevent the defendants from dealing in goods and business under the marks ‘Baby Forest’, ‘Baby Forest–Soham of Ayurveda’, ‘Baby Essentials’, and ‘Saundarya Potli’.

Senior Advocate Amit Sibal stated that Forest Essentials had been using the mark 'Forest Essentials' continuously since 2000, with over 150 stores in India and internationally. Forest Essentials enjoyed annual sales exceeding Rs. 425 crores and had spent over Rs. 32 crores annually on advertising and business promotion. Forest Essentials supplied products to over 500 hotel chains, exported products to 120 countries and was available online on websites such as Amazon and Flipkart. They possessed trademark registrations for both word and logo marks for 'Forest Essentials' in multiple classes, including Class 3. The details of these registrations were provided.

Forest Essentials claimed to have sold 'mother and baby care' products continuously since 2006 under the marks 'Forest Essentials Baby Essentials' and 'Forest Essentials Baby', with significant annual sales of approximately Rs. 15 crores. These products were purchased by hotels, celebrities, and the Ministry of External Affairs.

Senior Advocate Jayant Mehta emphasized that the trademark was ‘Forest Essentials’ and not ‘Forest Essentials Baby’ or ‘Forest Essentials Baby Essentials’. The word ‘Baby’ on their baby care product packaging described the intended purpose of the goods and was not used as a trademark.

Senior Advocate Mehta stated that the plaintiff used the term "Mother and Child" on its website for baby care products and only changed this category name to "Mom and Baby" during the pendency of the suit.

The court noted that although the plaintiff claimed ownership of the marks ‘Forest Essentials Baby’ and ‘Forest Essentials Baby Essentials’, they had never sought registration of these marks, despite asserting use since 2006. The first application for registration of these marks was made only after the suit was filed and following the Court's refusal to grant an ex parte ad interim injunction on August 4, 2023. The bench held that the plaintiff was not trading under these marks and that the terms ‘Baby’ and ‘Baby Essentials’ were used merely descriptively alongside their main house mark ‘Forest Essentials’.

The court admitted that the baby care range was marketed under the main house mark ‘Forest Essentials’ and not as a separate sub-brand. The baby care products were clearly categorized under the ‘Mother and Child/ Mother and Baby care / Mom and Baby’ range. The court held that the plaintiff's claim to proprietorship of the marks ‘Forest Essentials Baby’ and ‘Forest Essentials Baby Essentials’ was untenable, at least at a prima facie stage. 

The defendants launched their products in August 2022, applied for their trademark in June 2020, and registered the domain name ‘babyforest.in’ in July 2020, without any opposition from the plaintiff. The plaintiff only sent a legal notice on June 16, 2023, which did not mention the marks ‘Forest Essentials Baby’ or ‘Forest Essentials Baby Essentials’.

Documents showing the plaintiff’s reputation and goodwill were primarily related to their main products under the ‘Forest Essentials’ range targeted at adults, with few references to baby care products. All registrations were for their house mark ‘Forest Essentials’. The defendants operated several other domains related to ‘baby forest’.

The court considered three aspects—monopolies, the sophisticated consumer test, and the global appreciation test—as a helpful trio for assessing trademark confusion in a contemporary context. Monopolies or attempts to create them must be carefully examined and avoided by the court, as highlighted in the Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. case. 

The bench noted that the test of a 'customer of average intelligence and imperfect recollection' (originally articulated in Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 SCC OnLine SC 11, by the Hon'ble Supreme Court) also considered the category of goods, their price range, and the ability to access relevant information over the internet and social media to clarify which brand to choose. 

Minor confusion among customers does not justify granting an injunction against the defendant's mark entirely. For baby care products, purchasers, typically parents, are particularly cautious in selecting the right product/brand for their baby, court noted.

The court observed that various aspects constituted a brand, including the word mark, the device mark, the trade dress, the get-up, the layouts, the artistic work, the brand's presence on the internet and social media, its positioning, price point, and target consumer. Therefore, confusion, disruption, and association needed to be evaluated in a comprehensive context rather than in isolation, especially when the court had to conduct a thorough assessment at the plaintiff's request.

The court referred to the 'Pianotist test' established by Parker J. The court noted that this test remains a fundamental basis for assessing infringement, deception, confusion, and association. Parker J's test emphasized evaluating customer behavior and surrounding circumstances, stating the necessity to consider ‘the nature and kind of customer who would be likely to buy those goods’ and ‘all the surrounding circumstances’.

Case Title: Mountain Valley Springs India Private Limited v Baby Forest Ayurveda Private Limited (CS(COMM) 523/2023)