An intellectual property battle lasting three years and reaching the U.S. Supreme Court has ended at last with payment to Sabinsa Corp. by Creative Compounds of all profits made through trademark infringement on Sabinsa’s ForsLean® together with costs awarded to Sabinsa by the court.
Sabinsa alleged that there was a likelihood of confusion between Sabinsa’s registered trademark ForsLean and Creative Compounds’ unregistered mark Forsthin, both of which refer to Coleus forskohlii extract. In July 2010, the U.S. Court of Appeals overturned a trial court decision that had found no such confusion. Not only did the appellate court reverse the trial court, but also it ordered judgment to be entered in favor of Sabinsa without a new trial, which is unusual and speaks to the strength of Sabinsa’s ForsLean® trademark and the evidence of Creative Compound’s infringement of that trademark.
The U.S. District Court of New Jersey then awarded Sabinsa damages, ordering Creative Compounds‘ profits from its infringement on the ForsLean® trademark to be paid to Sabinsa.
On January 10, 2011, the U.S. Supreme Court denied Creative Compounds’ request to review the July 2010 decision of the Third Circuit Court in Sabinsa’s favor, after which the Federal Court in New Jersey denied Creative Compounds motion to alter or amend the judgment against it and denied that company a new trial.
In an end to this long battle, Sabinsa has finally collected on the judgment, receiving nearly $150,000 in disgorged profits from Creative Compounds.
James H. Hulme, Esquire of Arent Fox LLP in Washington, D.C., who represented Sabinsa in this matter, said “The outcome of this case should make it clear to any company considering trademark infringement that it can become a very expensive gamble, and ultimately not worth the risk. I am glad that, at the end of the day, the courts recognized both the strength and value of Sabinsa’s trademark and the need for the infringer to disgorge its profit to Sabinsa.”
Sabinsa has a long history of protecting the company’s intellectual property, from an extensive portfolio of patents to a long list of trademarks owned by the company. Sabinsa’s patent on BioPerine® (black pepper extract) was recently reaffirmed by the U.S. Patent Office, giving even stronger protection for this innovative bioavailability-enhancing ingredient.
Sabinsa founder Dr. Muhammed Majeed said “We will always protect our intellectual property, not only so we can continue researching new products and to protect the investment our customers make when they choose our products, but because it is simply the right thing to do.”