Decoding the forest fiasco: insights into the forest essentials vs. Baby forest trademark clash


In the dynamic landscape of intellectual property law, the Delhi High Court’s recent judgment in Mountain Valley Springs India Private Limited v. Baby Forest Ayurveda Private Limited[1], sheds light on the evolving standards for assessing deceptive similarity. However, this case has taken a new turn with a recent appeal, highlighting the complexity and ongoing evolution of trademark law in the digital age.

Mountain Valley Springs India Pvt. Ltd. (popularly known as Forest Essentials) filed a suit in the Delhi High Court against Baby Forest Ayurveda Pvt. Ltd. (Baby Forest), seeking an injunction to restrain the latter from using the trademarks ‘BABY FOREST’ and ‘BABY FOREST – SOHAM OF AYURVEDA.’ The plaintiff claimed that these trademarks were deceptively similar to their own trademarks ‘FOREST ESSENTIALS,’ ‘BABY ESSENTIALS,’ ‘FOREST ESSENTIALS-BABY ESSENTIALS,’ ‘LUXURIOUS AYURVEDA,’ and ‘SOUNDARIJA.’

The Single Judge’s decision not to grant an injunction against the defendants’ use of the ‘BABY FOREST’ marks was grounded in a careful examination of modern consumer behavior, market dynamics, and the evolving nature of trademark law. However, in a recent development, the Delhi High Court Division Bench, found merit in Forest Essentials’ contention that the learned Single Judge erred in interpreting the doctrine of ‘initial interest confusion.’

This article examines the Single Judge’s analysis of comparing the two marks — ‘FOREST ESSENTIALS’ and ‘BABY FOREST’ — which goes beyond surface-level similarities. Instead, it delves into a critical examination of how these marks might be perceived in the marketplace, particularly focusing on the likelihood of confusion they may cause among modern consumers. It also considers the implications of the recent appeal.

Case Overview:-

Arguments by plaintiff

The plaintiff, Mountain Valley Springs India Pvt. Ltd., claimed continuous use of the mark ‘FOREST ESSENTIALS’ since 2000, operating over 150 stores with annual sales exceeding Rs. 425 crores, and significant advertising expenditures. They asserted that since 2006, they had sold ‘Mother and Baby care’ products under the marks ‘FOREST ESSENTIALS-BABY ESSENTIALS’ and ‘FOREST ESSENTIALS BABY’, achieving annual sales of approximately Rs. 15 crores.

The plaintiff alleged the defendant’s adoption of the mark was dishonest, intended to exploit the plaintiff’s reputation and goodwill. They relied on instances of alleged confusion, including emails from hotels, Google search results, and social media comments, to establish likelihood of confusion.

Arguments by defendant

The defendant, Baby Forest Ayurveda Pvt. Ltd., argued that the plaintiff’s mark was ‘FOREST ESSENTIALS’ and not ‘FOREST ESSENTIALS BABY’ or ‘FOREST ESSENTIALS-BABY ESSENTIALS’, as the word Baby was used descriptively and not as a trademark.

The defendant highlighted that their products exclusively targeted babies, infants, and toddlers (0-8 years), while the plaintiff’s products were primarily for adults. They also pointed out differences in packaging, trade dress, and overall get-up, arguing there was no likelihood of confusion. They claimed to have launched their products since August 2022 and applied for the trademark ‘BABY FOREST’ in June 2020, which was not opposed by the plaintiff.


Whether the marks ‘BABY FOREST’ and ‘BABY FOREST–SOHAM OF AYURVEDA’ of the Respondent are deceptively similar to the plaintiff’s mark ‘FOREST ESSENTIALS’ and the adoption of the said trademark by the Respondent is dishonest?

Court’s findings:-

The court dismissed the plaintiff’s application for an interim injunction against the defendants, making several key observations:-

The Anti-Dissection Rule: Viewing Marks as a Whole

This principle, known as the anti-dissection rule, was highlighted in South India Beverages Pvt. Ltd. v. General Mills Marketing Inc.[2], Vasundhra Jewellers Pvt. Ltd. v. Kirath Vinod Bhai Jadwani & Anr.[3] This rule mandates that the Courts whilst dealing with cases of trademark infringement involving composite marks, must consider the composite marks in their entirety or as whole rather than dissecting them into its component parts and make comparison to determine the likelihood of confusion.

“It is true that where a distinctive label is registered as a whole, such registration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole.”[4]

In this case, the Court applies this rule to deny the plaintiff’s attempt to claim exclusivity over the word ‘FOREST’ in isolation. The Court notes that the plaintiff has always used ‘FOREST’ and ‘ESSENTIALS’ together, and in their own trademark applications, they argued that uniqueness lies in using these two words together. It held that the word ‘FOREST’ in itself is generic and plaintiff cannot claim dominance over the said part of their trademark[5] having not sought registration under Section 17(2)[6] of the Act. The Court cites Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. (1955)[7] to emphasize that courts must be careful not to allow trademark owners to expand their rights beyond legitimate bounds, preventing attempts to monopolize common words like ‘FOREST’.

Doctrine of Prior User vs. Registration

The doctrine of prior user of a trademark is a legal principle that gives priority to the person who has been using a mark earlier than a person who has registered for it later. The doctrine is recognized or protected under Section 34[8] of the Trade Marks Act, 1999. It elucidates that the Act safeguards the rights of a prior user against infringement by a registered user. In order to claim benefit or protection under this doctrine, the prior user has to establish certain elements:-

  • That, the trademark is must be ‘used’ by the proior user in the goods or services for which it is claimed;
  • That, the trademark must be used continuously and without interruptions within the territory by the prior user;
  • That, the trademark must be used from the date earlier than the date of use and registration of the similar or same trademark by the registered person;
  • That, the trademark must be used honestly and in good faith without any knowledge of the existence of the registered trademark or any mala fide intention to deceive of confuse the public.

A few documentations that can establish the use of a trademark in commerce:

  • Sales figures for goods or services sold under the trademark
  • Domain names and websites demonstrating the use of the trademark
  • Advertisement expenses/Invoices for the sale or purchase of the goods or services under the trademark

The Court upholds the principle from S. Syed Mohiddeen v. P. Sulochana Bai (2016)[9] that the rights of a prior user are superior to those of a subsequent registrant. However, in this case, the defendants had registered their mark ‘BABY FOREST’ in 2020, much before the plaintiff’s application for ‘FOREST ESSENTIALS BABY’. Here, not only did the defendants have prior registration, but the plaintiff’s claim of prior use was weakened by their failure to seek registration of their alleged baby-related marks until after the suit was filed.

It was noted that it is evident from the documents filed by plaintiffs that the baby care range is marketed under the main house mark ‘FOREST ESSENTIALS’ and not a separate sub-brand of ‘FOREST ESSENTIALS BABY’ and ‘FOREST ESSENTIALS-BABY ESSENTIALS’.

Doctrine of Deceptive Similarity

The concept of ‘deceptively similar’ is enshrined under Section 2(1)(h)[10] of the Trade Marks Act, 1999 as the degree to which two trademarks resemble each other in terms of their appearance, sound, or commercial impression. The factors to determine the deceptive similarity between the two marks were established by the Hon’ble Supreme Court in the matter of Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd.[11] It ruled that the following factors should be taken into account in determining whether a mark is deceptive:-

  1. The nature of the marks i.e. whether the marks are word marks or label marks or composite marks
  2. The degree of resemblance between the marks, phonetically similar and hence similar in idea.
  3. The nature of the goods
  4. The similarity in the nature, character and performance of the goods of the rival traders
  5. The class of purchasers who are likely to buy the goods bearing the marks they require, based on their level of education, intelligence, and a degree of care they are likely to exercise when purchasing or using the goods
  6. The mode of purchasing the goods
  7. Any other surrounding circumstances which may be relevant.

It was observed that the concept of deceptive similarity does not apply due to significant differences in packaging between the plaintiffs’ and defendants’ products. The dissimilarity between fonts used for the trademarks, stylization, trade dress, and overall packaging layout is clearly evident. It was also noted that the ‘Tree’ logo used by plaintiff and defendants is different, while defendants’ product is a sapling emanating from a very distinctive cradle, plaintiff’s one is more akin to ‘a tree of life sketch’ and is associated with a whole range of products. This weighed against a likelihood of confusion among consumers, as the overall visual impression created by the parties’ products was distinct.

Initial Interest Doctrine & The Test of ‘Customer of Average Intelligence and Imperfect Recollection’

The plaintiff cited the initial interest confusion doctrine, which asserts that confusion at the initial stage of consumer interest is actionable, even if it is resolved before purchase. This doctrine acknowledges that initial confusion can divert customers, allowing the infringer to benefit from the goodwill of the original brand. The rationale behind the doctrine is that even if consumers do not make erroneous purchases, merchants who cause initial confusion will divert potential consumers away from their competitors, wrongfully profiting from the goodwill that their competitors accrued.[12] However, the Court found this doctrine less applicable in the digital age, as even an average consumer with access to the internet and search engines can quickly cross-check and clarify any initial confusion before making a purchase.

The Single Judge Bench noted that ‘customer of average intelligence and imperfect recollection’ test, originally articulated in the Corn Products case[13] also has to take into account factors like product category, price point, and the consumer’s digital literacy now rather than applying just the traditional 1960s test in an isolated manner. “With approximately 450 million smartphone users in India, the ability to access information is very high and prevalent, and while understanding the mindset of the consumer this must be brought into the consideration,” the Bench observed. This digital empowerment subtly shifts the dynamics of consumer confusion, particularly in specialized markets like baby care products, where parents are notably perceptive and concerned.

The Pianoist Test

The Court further referred to the ‘Pianotist test’[14] established by Parker J., and later relied on in Kaviraj Pandit[15] by the Hon’ble Supreme Court, advocated assessing ‘the nature and kind of customer’ and ‘all these surrounding circumstances.’ This test remains, till date, a fundamental basis for assessing infringement, deception, confusion, and association. The test involves considering the nature of customers likely to purchase the goods or services and examining all relevant surrounding circumstances. The nature of the consumers who would be purchasing the goods has been held to be a relevant consideration also in J.R. Kapoor Vs. Microlx India[16] in which it was held that the class of purchasers who are likely to buy the goods bearing the marks they require, their education, intelligence and the degree of care they are likely to exercise in purchasing and/or using the goods would be a relevant factor for deciding the question of deceptive similarity.

The Triad for Modern Trademark Assessment

The bench led by Justice Anish Dayal opined that these three aspects: the monopoly test, the sophisticated consumer test, and the global appreciation test, form a useful triad for evolving our assessment of trademark confusion in today’s world.

  • The Monopoly Test: It reminds us that trademark owners shouldn’t be allowed to expand their rights beyond legitimate bounds, preventing attempts to monopolize common words. It serves as a check against attempts where companies make exaggerated claims, trying to monopolize parts of their trademarks even when they had explicitly agreed not to, ensuring that trademark owners do not unfairly monopolize common words or phrases.[17] The test reminds us that when a distinctive label is registered as a whole, the owner doesn’t automatically get exclusive rights to each individual word or part within that label.[18]
  • Sophisticated Consumer Test: A sophisticated consumer is one who is likely to spend more time, attention, and care when making a purchasing decision. Using this test, the courts generally hold that if a consumer can be expected to exercise a high degree of care, she will be less likely to be confused by any connection between a senior and junior trademark.[19] Consumer sophistication correlates positively with factors such as price, the length and complexity of the purchase transaction, and the infrequency of purchase. Additionally, education, age, gender, and income can influence consumer sophistication. Professional buyers, avid hobbyists, and (sometimes) women are often considered more sophisticated consumers.[20]
  • Global Appreciation Test: The “global appreciation” test requires one to examine, inter alia, the following facets, holistically as they are inter-dependent:[21]
  • The degree of visual, aural and/or conceptual similarity between the marks.
  • The overall impression created by the marks.
  • The impact that the impugned marks have on the relevant public i.e., the matter should be considered through the eyes of an average consumer, who would buy or receive the goods or services.
  • The distinctive character that the infringed mark has acquired i.e. either because of the mark per se or on account of reputation that it has enjoyed in the public space.
  • That the average consumer has an imperfect recollection.
  • The degree of similarity between the goods or services, which are purveyed under the rival marks.

In Abros Sports International v. Ashish Bansal[22], the court favored an extensive assessment over isolated factors. This test considers word marks, device marks, trade dress, internet presence, positioning, price, and target consumer. By listing these factors, the court provides a comprehensive framework for modern trademark analysis.

Analysis and implications

Descriptive Use vs. Distinct Trademark

The Court’s rationale for favouring the defendants despite the plaintiff’s claimed prior use seems to stem from its finding that the plaintiff was merely using the word ‘Baby’ in a descriptive sense along with their main house mark ‘FOREST ESSENTIALS’, and not as a separate trademark. The packaging and marketing material showed that the baby products were sold under the umbrella ‘FOREST ESSENTIALS’ brand, not as a separate ‘FOREST ESSENTIALS BABY’ sub-brand.

Hence, though the prior user doctrine generally favours the prior user, in this case, the court’s view that the plaintiff’s claimed mark was merely descriptive usage under their main brand, rather than a distinct trademark, tilted the balance in favour of the defendants’ registered mark.

The Court’s Approach to Likelihood of Confusion

A simple visit to the websites of Forest Essentials and Baby Forest reveals clear distinctions between the two brands. The trade dress for each is unique, with Baby Forest’s products (almost all of them) often featuring illustrations of a mother and child on their packaging. Additionally, the domain names for both brands are too distinct to get confused, and there is no evidence of meta tagging.

Further, applying the standards set by above mentioned case laws, one of the criteria is also the nature and class of consumers. It is relevant to note that target consumer base for the plaintiff’s and defendants’ products are different. While the defendants are focused exclusively on baby care products for infants and toddlers aged 0-8 years, the plaintiff’s baby care range is a limited subset of their broader product offerings targeted towards adults.

Thus, it is reasonable to expect users to read the descriptions that accompany the results of a search. In most cases, these descriptions will contain additional information that will make it clear whether a certain page is affiliated with the trademark owner.[23] Courts must remember that just because there may be some initial or momentary confusion on the part of Internet users, this does not automatically constitute a likelihood of confusion.

However, recent developments have cast doubt on the single judge’s interpretation of the initial interest confusion doctrine. In an appeal against this judgement, the Delhi High Court Division Bench comprising Justice Vibhu Bakhru and Justice Tara Vitasta Ganju found merit in Forest Essentials’ contention that the learned Single Judge erred in interpreting this doctrine.

The appeal has been listed for further hearing on September 9, 2024 which means the final word on this ongoing dispute is yet to be pronounced.


Over time, courts have established various factors and tests to guide this evaluation or assessment in trademark disputes. However, it’s crucial to understand that the process of deciding trademark disputes inherently varies from case to case, given the unique complexities involved in each matter. In this case, Ld. Single Judge suggested the three aspects of monopolies, sophisticated consumer test, and the global appreciation test, that would serve as a useful triad for evolving our assessment of trademark confusion, in today’s world. While this approach offers a thoughtful framework for addressing the challenges of trademark confusion in the contemporary era, the recent appeal highlights that there is still room for debate and refinement of these principles.

The digital landscape itself is not monolithic, and despite the high usage of smartphones in India, digital literacy and online shopping behaviors vary greatly across demographics. The Single Judge’s judgment was particularly appreciable as it kept in mind consumer behavior in this digital era, especially in urban and semi-urban areas. It recognized that today’s shoppers, armed with internet access, are smarter and more informed than ever before.

However, the Division Bench’s prima facie observation suggests that there may be a need to reconsider how the initial interest confusion doctrine applies in the digital age. This potential shift in interpretation could have significant implications for how trademark infringement is assessed in online marketplaces. As the matter is listed for next hearing, it will be interesting to see how the court balances the protection of trademark rights with the realities of digital commerce and consumer behavior.

[1] Mountain Valley Springs India Private Limited v. Baby Forest Ayurveda Private Limited, 2024:DHC:4053

[2] M/s. South India Beverages v. General Mills Marketing, 2014 SCC OnLine Del 1953

[3] Vasundhra Jewellers Pvt. Ltd. v. Kirath Vinod Bhai Jadwani & Anr., 2022 SCC OnLine Del 3370

[4] Lord Esher in Pinto v. Badman (8 R.P.C 181)

[5] Vardhman Buildtech Pvt. Ltd. v. Vardhman Properties Ltd., 2016 SCC OnLine Del 4738

[6] Trade Marks Act, 1999, S 17(2)

[7] Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., (1955) SCC OnLine SC 12

[8] Trade Marks Act, 1999, S 34

[9] S. Syed Mohiddeen v. P. Sulochana Bai, (2016) 2 SCC 683

[10] Trade Marks Act, 1999, S 2(1)(h)

[11] Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73

[12] John Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, note 5, § 23:6 (4th edn, Thomson Reuters 2009) 23-26 to 23-28, citing Grotrian v Steinway & Sons, 365 F Supp 707, 717 (SDNY 1973), affd, 523 F 2d 1331 (2d Cir 1975)

[13] Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 SCC OnLine SC 11

[14] Pianotist Co. Application, (1906) 23 RPC 774

[15] Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceuticals Laboratories, 1964 SCC OnLine SC 14

[16] J.R. Kapoor Vs. Microlx India, (1994) Supp (3) SCC 215

[17] Greers Ltd. v. Pearman and Corder Ltd. [(1922) 39 RPC 406]

[18] Lord Esher in Pinto v. Badman [8 RPC 181 at p 191]

[19] Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 975 (10th Cir. 2002)

[20] Thomas R Lee, Glenn L Christensen and Eric D DeRosia, ‘Trademarks, Consumer Psychology and The Sophisticated Consumer’ (2008) 58 Emory LJ 1001

[21] AMPM Fashions (P) Ltd. v. Akash Anil Mehta, 2021 SCC OnLine Del 4945

[22] Abros Sports International Private Limited v. Ashish Bansal and Ors., 2024:DHC:3551

[23] Jerome Gilson, Trademark Protection and Practice (2000) § 5.11[7]., (explaining that descriptions accompanying links on search engine results page will often dispel confusion).

About Aditi Agrawal 4 Articles
Aditi Agrawal is an undergraduate student pursuing a law degree specializing in Intellectual Property Rights at The Institute of Chartered Financial Analysts of India University, Dehradun. She is an avid reader and a dedicated researcher, fueled by a genuine passion for writing. She delves deep into the intricacies of legal research, immersing herself in a quest for knowledge and understanding. Through writing, she articulates her thoughts, insights, and findings with clarity and precision. Her areas of interest include intellectual property law, competition law, and contract law, among others.

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