The Division Bench of the Delhi High Court, in an appeal filed in the matter of Mountain Valley Springs India Private Limited vs Baby Forest Ayurveda Private Limited (Formerly Known as M/S Landsmill Healthcare Private Limited) & Ors. Prima facie found that the single Judge had erred in their interpretation of the initial interest confusion test while adjudicating a trademark dispute between Forest Essentials and Baby Forest. The Single Judge had denied the injunction to Forest Essentials against the mark ‘Baby Forest’.
Background
Forest Essentials, the appellant sought a permanent injunction to prevent the defendants from using deceptive similar marks to the plaintiff’s trademarks ‘Forest Essentials’, ‘Baby Essentials’, ‘Forest Essentials-Baby Essentials’, ‘LUXURIOUS AYURVEDA’ and ‘SOUNDARYA and restraining defendants from dealing in goods and business under defendants’ marks ‘BABY FOREST’, ‘Baby Forest–Soham of Ayurveda’, ‘Baby Essentials’ And ‘Saundarya Potli’.
Pleadings in Single Judge Bench
The plaintiffs (appellants) stated that Forest Essentials had been continuously using the mark ‘Forest Essentials’ since 2000, with over 150 stores in India and internationally. They also claimed to have continuously sold their ‘Mother and Baby Care’ products since 2006 under ‘FOREST ESSENTIALS’, ‘BABY ESSENTIALS’ and ‘FOREST ESSENTIALS BABY. To show confusion, they relied upon an email dated July 26, 2023, which was received from ‘sherry.padda@hyatt.com’ to the plaintiff, asking if the defendants’ collection ‘BABY FOREST’ was a new collection of plaintiffs and also a comment made on the Instagram feed of defendant asking, “Are you a unit of forest essentials?”, to which there was no reply by the defendant.
The defendants contended that the plaintiff’s mark was ‘Forest Essentials’ and not ‘Forest Essentials Baby’ or ‘Forest Essentials-Baby Essentials’. The word ‘Baby’ on the packaging of the plaintiff’s baby care products did not make the plaintiff’s trademark ‘Forest Essentials Baby’. The word ‘Baby’ was used to describe the intended purpose of the goods and not used as a trademark. Also, it contended that the plaintiff instead used the term “Mother and Child” on its website for the category of baby care products. It was only during the pendency of the suit that the plaintiff had changed its category name to “Mom and Baby”. They mentioned that the plaintiff had only ever used ‘FOREST’ and ‘ESSENTIALS’ together and had trademark registrations for the word ‘FOREST ESSENTIALS’ and not ‘FOREST’ and ‘ESSENTIALS’ separately. They drew attention to certain articles filed by the plaintiff from the customers’ websites showing that the plaintiff’s baby products were represented as ‘FOREST ESSENTIALS’ and not ‘FOREST ESSENTIALS BABY’.
Decision of the Single Judge Bench
The single Judge, after hearing the pleadings from both sides, denied the injunction to the plaintiff for the following reasons:
- Non-registration of Trademark: The plaintiff claimed ownership of the marks ‘Forest Essential Baby’ and ‘Forest Essentials-Baby Essentials’ but never sought registration despite alleging use since 2006.
- Lack of Opposition: The plaintiff did not oppose the registration of ‘BABY FOREST’ by the defendants.
- Marketing Strategy: The plaintiff’s documents indicated that the baby care range is marketed under the main house mark ‘FOREST ESSENTIALS’, not as separate sub-brands.
- Generic nature of ‘FOREST’: ‘FOREST’ is a generic term, and the plaintiff cannot claim dominance over it without registration under Section 17(2) of the Trade Marks Act, 1999.
- Insufficiency of Google Search Evidence: Google search results are insufficient to prove confusion, as they can be influenced by various factors and manipulated by multiple searches.
- Concession by Defendants: The defendants’ concession to not use certain terms cannot be interpreted as an admission that their mark is deceptively similar to the plaintiff’s.
- Consumer Awareness and Online Shopping: Parents, the primary purchasers of baby care products, are vigilant about their purchases, especially online, where they can cross-check product origins and brands.
- Evolution of Consumer Behavior: The ‘initial interest confusion test’ may not apply strictly due to consumers’ access to information through the internet and their inclination to research before purchasing.
- Consideration of New Parameters: Trademark confusion tests need to evolve to consider modern consumer behaviour, sophistication, and the impact of digital retail channels.
- Global Appreciation: Confusion, disruption, and association should be assessed comprehensively rather than in isolation, considering the full consumer journey and modern market dynamics.
Appeal before the Division Bench
The counsel appearing on behalf of the appellant submitted that the learned single Judge misinterpreted the doctrine of ‘initial interest confusion’ to mean that the confusion must subsist till the transaction is completed.
The appellant also submitted that the learned single Judge had not addressed the issue of the confusion by single-projecting the said idea. They submitted that the appellant’s brand ‘Forest Essentials’ – which is an Ayurvedic brand – and the respondent’s ‘Baby Forest-Soham of Ayurveda’ conveys a similar idea as the appellant’s ‘Forest Essentials Luxurious Ayurveda’. In addition, the appellant claimed that it also uses the trademark, ‘Baby Essentials’ and ‘Forest Essentials Baby Essentials’.
The Court held that prima facie, it found merit in the appellant’s contention that the learned Single Judge had erred in its interpretation of the doctrine of ‘initial interest confusion’ to entail persistence of confusion till a stage that the transaction was consummated. The doctrine of ‘initial interest confusion’ entails that there is confusion only at the initial stage, and there is no confusion when the transaction for sale and purchase is completed. The customers have no doubt about the product they will buy when the sale is completed. The confusion is only at the initial stage. The matter is now listed on September 09, 2024, to hear the appellant in detail.
Conclusion
In conclusion, the Division Bench of the Delhi High Court, in an appeal against the decision of the Single Judge, prima facie, found that there were errors in the interpretation of the initial interest confusion test in a trademark dispute between Forest Essentials and Baby Forest. This case deals with the doctrine of ‘initial interest confusion’ in detail and discusses how it is implemented in such cases. Overall, this case underscores the complexity of trademark disputes in the modern era and highlights the need for a nuanced understanding of consumer behaviour, marketing strategies, and legal doctrine in adjudicating such matters.
