JUDGMENT

ANISH DAYAL, J.

I.A. 14373/2023 & I.A. 21648/2023 (under Order XXXIX Rules 1 and 2 CPC)

1. This judgment disposes of the applications filed under Order XXXIX Rules 1 and 2 of Code of Civil Procedure, 1908 (hereinafter referred to as “CPC”) seeking ad interim injunction as part of the suit filed by plaintiff for permanent injunction restraining defendants and all those acting for or on their behalf from directly or indirectly infringing plaintiff’s trademarks ‘FOREST ESSENTIALS’, ‘BABY ESSENTIALS’, ‘FOREST ESSENTIALS-BABY ESSENTIALS’, ‘LUXURIOUS AYURVEDA’ and ‘SOUNDARYA’ and/or any other trademark deceptively similar. Permanent injunction is also sought for restraining defendants from dealing in goods and business under defendants’ marks ‘BABY FOREST’, ‘BABY FOREST–SOHAM OF AYURVEDA’, ‘BABY ESSENTIALS’ and ‘SAUNDARYA POTLI’.

2. When the matter was first listed on 04th August, 2023, senior counsel for defendants had submitted that defendants are not intending to use the marks ‘SAUNDARYA’ and ‘BABY ESSENTIALS’ and have undertaken so, in their reply dated 12th July, 2023 to the cease-and-desist notice. The dispute, therefore, stood restricted as to whether the marks ‘BABY FOREST’ and ‘BABY FOREST–SOHAM OF AYURVEDA’ (hereinafter referred to as “Impugned Marks”) are to be treated as deceptively similar to the mark ‘FOREST ESSENTIALS’.

3. It is also noted that various rectifications filed by plaintiff against defendants of the said marks are pending adjudication by this Court and are numbered as CO(COMM.IPD-TM) 186/2023, CO(COMM.IPD-TM) 187/2023, CO(COMM.IPD-TM) 188/2023, CO(COMM.IPD-TM) 189/2023, CO(COMM.IPD-TM) 190/2023 and CO(COMM.IPD-TM)

191/2023.

4. Comparative representation of the marks of both parties, is tabulated as under:

5. Arguments were heard on behalf of both parties, which are synopsized as under.

Submissions on behalf of plaintiff

6. Mr. Amit Sibal, Senior Counsel, appeared on behalf of plaintiff and made the following submissions:

6.1 Senior Counsel for plaintiff claimed that plaintiff has been using the mark ‘FOREST ESSENTIALS’ continuously since 2000 with over 150 stores in India and internationally, enjoying annual sales of over Rs.425 crores and having spent over Rs.32 crores in annual advertising and business promotion activities. Plaintiff claims to supply its products, to over 500 hotel chains, exporting products to 120 countries and is available online on websites such as ‘Amazon’ and ‘Flipkart’. The documents in support of this, were pointed out by Senior Counsel for plaintiff.

6.2 Plaintiff had trademark registrations for both word and logo marks for ‘FOREST ESSENTIALS’ in multiple classes, including Class 3. The details of the registrations of plaintiff’s marks are tabulated as under:

6.3 The registration for the device mark ‘FOREST ESSENTIALS’ was granted on 11th March, 2005 in class 3 under No. 1125917 w.e.f. 13th August, 2002; for the word mark ‘FOREST ESSENTIALS’ in class 3 granted on 29th March, 2019 under No. 3932253 w.e.f. 31st August, 2018 and for the device mark of the ‘Tree’ in class 3 under No. 4975130 w.e.f.

17th May, 2021.

6.4 Plaintiff claims to have continuously sold its ‘Mother and Baby care’ products since 2006 under its marks ‘FOREST ESSENTIALS- BABY ESSENTIALS’ and ‘FOREST ESSENTIALS BABY’. Plaintiff claims significant annual sales of approximately Rs. 15 crores in the baby products, having been purchased by hotels, celebrities, Ministry of External Affairs, and further relies on, various articles published in newspapers and magazines. In this regard, attention was drawn by counsel for plaintiff to invoices, CA certificates, newspaper articles, emails, Google search results etc.

6.5 The images provided by plaintiff of their products and label are as under:

6.6 Comparative images of plaintiff’s products and that of defendants, are reproduced as under:

6.7 Senior counsel for plaintiff pointed out to illustrations to show that confusion had arisen in relation to defendants’ products for customers