The NJ District Court ordered Creative Compounds to disgorge its profit of almost $140,000 following sales of the infringing product and to pay those disgorged profits to Sabinsa.
The announcement represents the latest development in the protracted battle between Sabinsa and Creative Compounds over trademark infringement of Sabinsa’s ForsLean.
The case has centered on Sabinsa’s ForsLean mark and Creative Compounds’ Forsthin. Both products are extracts of Coleus forskohlii intended for use in weight management products.
“The district court’s final order requiring Creative Compounds to disgorge all of its profit from its sale of ‘Forsthin’ should serve as a warning to those who are tempted to trade upon Sabinsa’s good name and intellectual property,” said James Hulme, Esq. of Arent Fox LLP in Washington, DC, who represented Sabinsa in this case.
“At the end of the day, infringers will have to pay for their infringement. The court’s order demonstrates that ultimately there is no profit in being an infringer.”
In January 2011, the Supreme Court denied Creative Compounds’ Petition for Writ of Certiorari – a document which a losing party files with the Supreme Court asking them to review the decision of a lower court – thereby finalizing a decision in Sabinsa’s favor from the Third Circuit Court in July 2010, which confirmed that Creative Compounds created a likelihood of confusion between the two brands.
Commenting on the NJ district court’s decision, Dr Muhammed Majeed, Sabinsa’s founder, said: “This battle has taken a very long time to resolve, but we were confident that the courts would indeed confirm our ownership of this trademark and the similarity of the infringing company’s mark.
“We will always stand firmly behind our intellectual property to protect our investment and that of our customers.”
Jeff Lind, CEO of Sabinsa confirmed to NutraIngredients-USA that the court made it clear the decision is final.
History of use
According to earlier court papers, ForsLean was Sabinsa's top revenue-generating product for at least five years preceding the initial trial. It remains in the top five ingredients for Sabinsa globally, said the company. The company remains the leading supplier of Coleus forskohlii extracts in the US, it added, and its ForsLean ingredients is incorporated into over 100 products in the US.
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.
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.