Introduction:
The interrelation between composite marks and Section 17 of trademark law is crucial in understanding the scope of trademark protection. Composite marks, consisting of multiple elements, grant owners’ exclusive rights upon registration under Section 17. However, Section 17(2) introduces nuances, stating that if any part of the trademark lacks distinctiveness or is common in trade, exclusivity may not extend to those specific parts. This case study of Forest Essentials vs. Baby Forest Ayurveda elucidates these concepts, showcasing the complexities of trademark disputes and the necessity for comprehensive understanding and protection of trademark components to maintain exclusivity and brand identity.
Interrelation between Composite mark and Section 17:
The concept of a composite mark revolves around the idea that a trademark can consist of multiple elements. Under Section 17 of trademark Act, when a trademark is registered, it grants the owner exclusive rights to use the trademark as a whole. This means that the owner has the sole authority to use all elements of the trademark collectively.
However, “Section 17(2) introduces an important caveat to this exclusivity. It states that if any part of the trademark is not separately applied for or registered by the owner, or if that part is common in the trade or lacks distinctiveness, then the registration does not confer exclusive rights to those specific parts. In such cases, the owner’s exclusive rights only extend to the trademark as a whole, not to its individual components.”
This concept underscores the importance of considering the entire trademark as a unified entity when seeking registration and asserting rights over it. Owners must be mindful of the distinctiveness of each component and ensure that all elements are adequately protected to maintain exclusive rights over the entire trademark.
Case Brief: Forest Essentials vs. Baby Forest Ayurveda[1]:
In this recent case an interim injunction request from Forest Essentials, a prominent skincare and cosmetics brand, owned by Mountain Valley Springs India Private Limited, sought to prevent Baby Forest Ayurveda Private Limited (formerly Landsmill Healthcare Private Limited) from using the marks “Baby Forest” and “Baby Forest- Soham of Ayurveda” for their baby care products. Forest Essentials argued that these marks were too similar to their own, potentially causing consumer confusion and diluting their brand identity. They also sought to restrict the use of “Baby Essentials” and “Saundarya Potli” by the defendants, citing a resemblance to their product lines. The plaintiff’s application was filed under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking a permanent injunction to restrain the defendants from infringing on their trademarks such as ‘FOREST ESSENTIALS’, ‘BABY ESSENTIALS’, ‘FOREST ESSENTIALS-BABY ESSENTIALS’, ‘LUXURIOUS AYURVEDA’, and ‘SOUNDARYA’.
Court’s Verdict:
Justice Anish Dayal, weighing the arguments, noted the common usage of the term “Forest” and Forest Essentials’ failure to register under Section 17(2) of the Trademark Act for exclusivity over such a generic term. While acknowledging Forest Essentials’ higher sales, the court rejected claims to monopolize terms related to “Forest” or challenge “Baby Forest” registration due to the absence of registration for terms like “FOREST ESSENTIAL BABY.”
The court emphasized that “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.[2], which held that registration does not confer exclusive rights in part of the mark,”.
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.
Recognizing the digital retail shift, the court highlighted the prevalence of information accessibility among consumers. Nonetheless, it upheld the defendant’s undertaking to avoid using “SAUNDARYA” and “BABY ESSENTIALS,” providing partial relief to Forest Essentials regarding more directly associated terms. However the court dismissed the interim injunction sought by the plaintiff and scheduled the matter for further hearing before the Joint Registrar.
Conclusion:
In dismissing Forest Essentials’ interim injunction request, the court emphasized the common usage of the term “Forest” and the necessity of seeking registration under Section 17(2) for exclusivity. This case serves as a reminder for trademark proprietors to carefully consider the registration and protection of all components of their marks to maintain exclusive rights.
[1] Mountain Valley Springs India Pvt Ltd v. Baby Forest Ayurveda Private Limited (Formerly Known As M/S Landsmill Healthcare Private Limited) & Ors., 2024 DHC 4053
[2] Vardhman Buildtech Pvt. Ltd. v. Vardhman Properties Ltd., 2016 SCC OnLine Del 4738
