The case centered on Sabinsa’s ForsLean mark and Creative Compounds’ Forsthin. Both products are extracts of Coleus forskohlii intended for use in weight management products.
A District Court in New Jersey had previously ruled that there was no likelihood of confusion between the two marks. However, the US Court of Appeals decision on July 9, 2010 overturns the District Court’s findings, stating that the District Court erred in its findings. It also judged that no new trial was necessary.
To read the entire opinion, please click here.
The result was welcomed by Dr Muhammed Majeed, founder of Sabinsa. “This is actually a victory for all companies which invest significant resources in science and innovation,” he said.
“Infringing on the intellectual property other companies have worked so hard to develop is illegal and immoral. The nutraceuticals industry runs on innovation and science, and without it growth would falter. If a company can’t benefit from their investment, there is no incentive to do so,” added Dr Majeed.
According to the court papers, ForsLean was Sabinsa's top revenue-generating product for at least five years preceding the trial in the District Court. It remains in the top five ingredients for Sabinsa globally, said Shaheen Majeed, Sabinsa’s marketing director. The company remains the leading supplier of Coleus forskohlii extracts in the US, added Majeed, and its ForsLean ingredients is incorporated into over 100 products in the US.
History of use
Sabinsa began research into the potential weight management benefits of forskohlin in 1996. Positive results from a clinical trial led to the filing of an intent-to-use application for the trademark, ForsLean. The product name was derived from "Fors" from forskohlin and "Lean" for lean body mass.
Supply of the product was tested in 2003 when severe drought struck India. Sabinsa is reported to have spent significant resources to ensure supply by helping Indian farmers to cultivate Coleus forskohlii. These initiatives led to the creation of the "ForsLean promise", which ensures the supply of forskohlin in the future.
Creative Compounds entered the forskohlin market in 2002, and adopted the Forsthin name in 2004. Sabinsa sent a cease-and-desist letter to Creative Compounds in the summer of 2004, shortly after adoption of the Forsthin name.
No one from Creative Compounds was available for comment prior to publication.
Shaheen Majeed explained that the company learnt important lessons following 2003 drought. “It was the first incident which taught us to look beyond conventional sourcing practices and address supply issues directly by working with the farmers.
“Unfortunately, several years later, droughts and floods in many parts of India affected us even more, ultimately leading to us owning or leasing our own land for cultivation. As the demand for coleus grew, the strains placed on the Indian farmers, and the relentless pursuit by competitors who have seen what we created with the market for this product and want to cash in, have made supply a major issue for coleus.
“Our agriculture program has become extensive, and expensive, encompassing other growing regions and products, in order to ensure our customers a steady supply of Sabinsa’s proprietary ingredients,” he added.