Forest Essentials vs Baby Forest: Scope of Protection for Common Elements in Composite Marks

In Trademark law, determining the extent of protection afforded to composite marks, particularly those containing common or descriptive elements, remains a recurring challenge. This issue was recently considered by the Delhi High Court in an appeal decided by Justice Navin Chawla against an order refusing interim injunction in Mountain Valley Springs India Private Limited Vs Baby Forest Ayurveda Private Limited & Ors., FAO (OS) (Comm) 111/2024 & CM Appl. 33733/2024, CM Appl. 33736/2024. The appeal primarily examined whether the marks “FOREST ESSENTIALS” and “BABY FOREST” were deceptively similar for the purpose of granting interim relief.

Background:

The appellant (Mountain Valley Springs India Private Limited) has been using the mark “FOREST ESSENTIALS” since 2000 and for baby care products since 2006. The respondents (Baby Forest Ayurveda Private Limited) adopted and obtained registration for the mark “BABY FOREST” on a proposed to be used basis in 2020 and commenced sales in 2022 under the marks “BABY FOREST” and “BABY FOREST–SOHAM OF AYURVEDA”. In June 2023, the appellant became aware of the respondents’ use of the impugned marks and filed a suit of infringement and passing off, seeking interim injunction. The Learned Single Judge dismissed the applications and refused interim injunction, which was challenged in the present appeal by the appellant against the judgment dated May 15, 2024.

Impugned order:

The Learned Single Judge dismissed the appellant’s applications seeking interim injunction against use of the marks “BABY FOREST” and “BABY FOREST–SOHAM OF AYURVEDA”. It was held that the appellant failed to establish proprietorship over “FOREST ESSENTIALS BABY” and “FOREST ESSENTIALS-BABY ESSENTIALS”, and could not claim exclusivity over the word “FOREST”, which is generic. Applying the anti-dissection rule, the marks were considered as a whole, and no deceptive similarity was found in view of differences in trade dress, overall presentation, and logos. The single judge further held that the material on record did not establish likelihood of confusion and that the balance of convenience did not favour grant of injunction. A detailed review of the single judge order can be accessed here.

Appellant’s contentions:

The appellant submitted that they have long and continuous use of the marks “FOREST ESSENTIALS” and “FOREST ESSENTIALS BABY”, enjoying significant goodwill. They contended that the respondents’ marks are deceptively similar in relation to identical goods, and relied on instances of actual confusion, including customer queries, emails from hotels, social media comments, and Google search results. They further argued that even initial confusion is sufficient and that ‘FOREST’ is a dominant feature in their marks with acquired secondary meaning. On this basis, they urged that a prima facie case was made out and the balance of convenience favoured grant of interim injunction.

Respondent’s contentions:

The respondents submitted that the appellant’s mark ‘FOREST ESSENTIALS’ is distinct from their marks and that the appellant has no registration for ‘BABY ESSENTIALS’, ‘BABY FOREST’ or related marks, with subsequent applications being mala fide. They contended that ‘FOREST’ is a common term, that no monopoly can be claimed over it, and that their adoption of ‘BABY FOREST’ was bona fide for ayurvedic baby products, whereas the appellant has minimal use in the baby care industry. They further submitted that the alleged instances of confusion are unreliable or procured, and that the marks, trade dress, labels, and logos are visually distinct.

Analysis and Findings

The Court began by reiterating the limited scope of appellate interference with discretionary orders, relying on Wander Ltd. v. Antox India Pvt. Ltd., and held that it would not substitute its own discretion unless the impugned order was arbitrary, perverse, or contrary to settled principles. The Court referred to Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. for factors on deceptive similarity, Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra for the distinction between infringement and passing off and the anti-dissection/dominant feature tests, and American Cyanamid Co. v. Ethicon Ltd. for interim injunction principles.

Applying these principles, the Court held that both marks are composite marks and, applying the anti-dissection rule, the appellant cannot claim exclusivity over the word “FOREST”. It observed that “FOREST” is a dictionary word and no monopoly can be claimed absent strong evidence of secondary meaning. It further held that the respondents’ adoption of “BABY FOREST” was prima facie bona fide and not dishonest.

On comparison, applying the test of an average consumer with imperfect recollection, the Court found no deceptive similarity between the marks. The evidence of actual confusion was held to be inconclusive at the interim stage. The findings of the Trade Marks Office were also held to be context-specific and not determinative. The Court further held that differences in logos, packaging, and overall presentation were insufficient to establish a strong prima facie case. While it noted, relying on Under Armour Inc., that even initial interest confusion may be sufficient in law, it held that the Single Judge’s error in this regard did not affect the ultimate conclusion. Accordingly, applying the principles in Wander Ltd., the Court held that no case for interference was made out, as the appellant failed to establish a prima facie case, likelihood of confusion, or balance of convenience in its favour.

This decision clarifies that exclusivity cannot be claimed over common or descriptive elements like ‘FOREST’ without proof of secondary meaning. It reinforces that marks must be assessed as a whole from the perspective of an average consumer, and that mere fleeting confusion is insufficient to grant interim relief. The judgment provides a balanced approach between trademark protection and fair use of common terms.

Written by Sai Jawahar