FAO(OS)(COMM) 111/2024 Page 1 of 31

* IN THE HIGH COURT OF DELHI AT NEW DELHI

Reserved on: 19.01.2026

Pronounced on: 27.02.2026

+ FAO(OS) (COMM) 111/2024 & CM APPL. 33733/2024, CM

APPL. 33736/2024

MOUNTAIN VALLEY SPRI NGS INDIA PRIVATE

LIMITED .....Appellant

Through: Ms. Swathi Sukumar, Sr. Adv.

with Mr.Essenese Obhan,

Mr.Neel Mason, Ms.Ayesha

Guhathakurta and Ms.Urvika

Aggarwal, Advs.

versus

BABY FOREST AYURVEDA PRIVATE LIMITED

(FORMERLY KNOWN AS M/S LANDSMILL

HEALTHCARE PRIVATE LIMITED) & ORS.

.....Respondents

Through: Mr.Jayant Mehta, Sr. Adv. with

Mr.Sundeep Chatterjee,

Mr.Rohan Swarup, Ms.Tanya

Arora, Ms.Aastha Verma,

Advs.

CORAM:

HON'BLE MR. JUSTICE NAVIN CHAWLA

HON'BLE MS. JUSTICE MADHU JAIN

J U D G M E N T

NAVIN CHAWLA, J.

1. This appeal has been filed challenging the judgment dated

15.05.2024 passed by the learned Single Judge of this Court in I.A.

14373/2023 and I.A.21648/2023 in CS (COMM) 523/2023, titled

FAO(OS)(COMM) 111/2024 Page 2 of 31

Mountain Valley Springs India Private Limited v. Baby Forest

Ayurveda Private Limited (formerly known as M/S Landsmill

Healthcare Private Limited), whereby the learned Single Judge has

dismissed the said applications filed by the appellant under Order

XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (in short,

‘CPC’) and refused an interim order of injunction against the

respondents herein for restraining them from using the mark ‘BABY

FOREST’ and ‘BABY FOREST-SOHAM OF AYUVEDA’

(hereinafter referred to as the ‘Challenged Marks’).

2. It is pertinent to mention that, by an undertaking given to the

Court on 04.08.2023 in I.A. 14373/2023, the respondents agreed not

use the marks ‘SAUNDARYA’ and ‘BABY ES SENTIALS’.

Consequently, the controversy stood confined to the Challenged

Marks.

Case of the appellant:

3. It is the case of the appellant that it sells product formulations

based on the ancient science of Ayurveda, and has been using the

mark ‘FOREST ESSENTIALS’ continuously since at least 2000, with

annual sales of over Rs. 425 crores. It supplies its products to over 500

hotel chains, has over 150 stores, exports internationally, and is also

available online on its own website as well as on the e-commerce

platforms such as Amazon (www.amazon.in) and Flipkart

(www.flipkart.com).

4. The details of the various marks registered in favour of the

appellant are tabulated as under:

FAO(OS)(COMM) 111/2024 Page 3 of 31

FAO(OS)(COMM) 111/2024 Page 4 of 31

5. The appellant further asserts to have continuously sold its

‘Mother and Baby Care’ products since 2006 under its marks

‘FOREST ESSENTIALS-BABY ESSENTIALS’ and ‘FOREST

ESSENTIALS BABY’, and claims annual sales of approximately Rs.

15 crores in baby products.

6. It is the case of the appellant that in June 2023, it came across

the respondent’s website (https://www.babyforest.in/) and social

media pages. After going through the same, it came to know that the

respondents have illegally, knowingly and with malice, adopted the

Challenged Marks ‘BABY FOREST’ and ‘BABY FOREST–SOHAM

OF AYURVEDA’ as well as a similar ‘Tree’ logo for selling

FAO(OS)(COMM) 111/2024 Page 5 of 31

ayurveda based products for babies and other allied goods, which are

deceptively similar to the appellant’s trademarks ‘FOREST

ESSENTIALS’, ‘FOREST ESSENTIALS -BABY ESSENTIALS’,

‘FOREST ESSENTIALS BABY’ and ‘LUXURIOUS AYURVEDA’.

7. It is asserted by the appellant that the respondents were

operating under the name ‘M/s Landsmill Healthcare Private

Limited’, but have rebranded to ‘Baby Forest Ayurveda Private

Limited’, sometime around December 2022 - January 2023, to mimic

the appellant. It is asserted that the respondents have also maliciously

obtained the registration on a ‘proposed to be used basis‟, in 2020 of

the mark ‘BABY FOREST’ in trademark classes 28, 35, 21, 25, 3, and

5, against which the appellant has filed rectifications which are

pending before this Court.

8. It is asserted that the respondents have also actively encouraged

customer confusion on social media by not responding to customers

asking if ‘BABY FOREST’ was part of ‘FOREST ESSENTIALS’.

The appellant has also received queries from its own clients asking

whether the respondents were associated with it. Further, the Google

search engine, when ‘is baby f’ was typed, has also predicted the

search query as ‘is baby forest and forest essentials same’. The

respondents also launched a store in Saket, Delhi, in the very same

mall as the appellant’s store, to follow the footsteps of the appellant.

The appellant asserts that, therefore, there is actual evidence of

confusion and deception being caused due to the respondents using the

Challenged Marks.

FAO(OS)(COMM) 111/2024 Page 6 of 31

9. It is asserted that the respondents have, in fact, themselves

admitted to the confusion, by opposing the appellant’s trademark

application No. 6058801 for ‘FOREST ESSENTIALS BABY’. The

learned Assistant Registrar of Trade Marks has, in fact, accepted the

said objections, vide order dated 10.12.2025, inter-alia finding the

marks of the appellant to be deceptively similar to that of the

respondents.

10. Also highlighted is the Order dated 04.08.2023 passed in I.A.

14373/2023, wherein the respondents themselves undertook to stop

using the marks ‘SAUNDARYA’ and ‘BABY ESSENTAILS’. The

appellant urges that this itself shows that the intent of the respondents

was to copy all marks of the appellant, and it is only when confronted,

the respondents have up their claim to at least two of the marks of the

appellant.

Case of the respondents:

11. On the other hand, it is the case of the respondents that, they

operate exclusively in baby care products for infants and toddlers and

sell various specialised products.

12. It is asserted that the trademark ‘BABY FOREST’ has been

registered in the favour of the respondents since June 2020. The

domain name ‘babyforest.in’ was registered on 01.07.2020 and sales

commenced from August 2022 under the ‘BABY FOREST’ mark.

The annual sales for the financial year 2022-2023 were approximately

Rs. 2.26 crores, with promotional expenses of Rs. 1.9 crores. The

details of the registration of the respondents’ marks are tabulated as

FAO(OS)(COMM) 111/2024 Page 7 of 31

under:

13. As far as the claim of the appellant is concerned, it is contended

that the appellant’s registered trademark is ‘FOREST ESSENTIALS’,

not ‘FOREST ESSENTIALS BABY’ or ‘FOREST ESSENTIALS-

BABY ESSENTIALS’.

14. It is further highlighted that applications for registration of the

marks ‘FOREST ESSENTIALS BABY’ and ‘FOREST

FAO(OS)(COMM) 111/2024 Page 8 of 31

ESSENTIALS-BABY ESSENTIALS’ were filed by the appellant

only on 09.08.2024, that is, days after the learned Single Judge

refused to grant an interim injunction on 04.08.2023 in I.A.

14373/2023. It is asserted that these applications have been filed by

the appellant only to counter the submission of the respondents that

the appellant was not using the said Trade Marks and was not the

registered proprietor thereof.

15. It is the case of the respondents that they have a far wider and

more comprehensive range of baby care products, while the

appellant’s products are essentially targeted towards adults. The

elements of reputation and goodwill cited by the appellant are for the

main ‘FOREST ESSENTIALS’ range and not for the ‘baby care’

range of ‘FOREST ESSENTIALS’.

16. It is asserted that the word ‘FOREST’ is a dictionary word, and

no entity can be granted exclusive right to use the same for its

products. Furthermore, it is claimed that the appellant has always used

‘FOREST’ and ‘ESSENTIALS’ together and therefore, has trademark

registrations for the word ‘FOREST ESSENTIALS’ and not

‘FOREST’ and ‘ESSENTIALS’ separately. Hence, the appellant

cannot claim monopoly over the word ‘FOREST’ in relation to

cosmetics, ayurvedic products or baby care products.

17. It is contended that irrespective, there is no visual, phonetic or

structural similarity between the appellant’s trademark ‘FOREST

ESSENTIALS’ and the respondents’ ‘BABY FOREST’. The trade

dress adopted by the respondents is also completely different from that

FAO(OS)(COMM) 111/2024 Page 9 of 31

of the appellant.

18. It is further asserted that the appellant has been changing its

‘Tree’ logo from time to time and consequently, enjoys no lasting

goodwill for the same. Irrespective, even a glance at the logo of the

respondents, , shows that it is vastly different from that

of the appellant’s, .

19. It is further claimed that the reliance placed by the appellant on

Google search results, social media, and on its own clientele, is not

enough to show widespread confusion or even likelihood thereof.

20. It is stated that the respondents only elected to stop using

‘BABY ESSENTIALS’ as a product category and stopped using

‘SAUNDARYA’ to describe its travel kit product, as a good faith

gesture to resolve the disputes between the parties. Hence, the

question of estoppel applying against the respondents does not arise.

Impugned Order:

21. As noted hereinabove, the learned Single Judge has dismissed

the applications filed by the appellant seeking interim injunction

against the respondents from using the marks ‘BABY FOREST’ and

‘BABY FOREST– SOHAM OF AYURVEDA’.

22. The learned Single Judge in the Impugned Order has observed

that the appellant has failed to establish proprietorship over ‘FOREST

FAO(OS)(COMM) 111/2024 Page 10 of 31

ESSENTIAL BABY ’ and ‘FOREST ESSENTIALS -BABY

ESSENTIALS’, despite claiming use since 2006. The appellant has

itself marketed its baby care range under the main house mark

‘FOREST ESSENTIALS’ and not a separate sub-brand of ‘FOREST

ESSENTIAL BABY’ or ‘FOREST ESSENTIALS -BABY

ESSENTIALS’.

23. It was also held that the word ‘FOREST’ is generic, and the

appellant could not claim proprietary rights over the said part of their

Trade Mark, having not sought registration under Section 17(2) of the

Trade Marks Act, 1999.

24. Applying the anti-dissection rule, the learned Single Judge

opined that the appellant’s uniqueness lay in using ‘FOREST’ and

‘ESSENTIALS’ together as a composite mark. It was opined that

monopolies or an attempt to create monopoly must be carefully

filtered, sifted and eschewed by the Court.

25. It was held that the concession given by the respondents to not

use ‘BABY ESSENTIALS’ and ‘SAUNDARYA’ , itself cannot be

amplified to a larger concession by the respondents that their mark is

deceptively similar to that of the appellant.

26. The learned Single Judge held that not only is the font used for

the trade marks different, but also the stylization as well as the trade

dress, the whole get up, and layout of the packaging is dissimilar. The

‘Tree’ logos used by the parties was also held to be dissimilar and the

material relied upon by the appellant was not held to be sufficient to

cause widespread confusion.

FAO(OS)(COMM) 111/2024 Page 11 of 31

27. The learned Single Judge further opined that the change in

name of the respondent no.1 was not dishonest as it was already

selling products under the mark ‘BABY FOREST’ since 2022.

28. The learned Single Judge placed reliance on the judgment of

this Court in Under Armour, INC. v. Aditya Birla Fashion and Retail

Ltd., 2023 SCC OnLine Del 2269, to hold that it is not uncommon for

a customer to cross check the origin of the products and the particular

brand that they are seeking to purchase, even if they are faced with a

‘state of wonderment‟. It was opined that therefore, the traditional test

of ‘customer of average intelligence and imperfect recollection‟ must

evolve to account for modern consumer behaviour. The initial interest

confusion argument should be tested on the nature of the product, in

this case a premium baby care product.

29. Taking into consideration the above factors, the learned Single

Judge has held that the balance of convenience, therefore, would be

against granting any order of injunction.

SUBMISSIONS OF THE LEARNED SENIOR COUNSEL FOR

THE APPELLANT:

30. Ms.Swathi Sukumar, the learned senior counsel appearing for

the appellant, submits that the learned Single Judge has failed to

appreciate that the appellant enjoys wide reputation and goodwill in its

trade marks ‘FOREST ESSENTIALS’ and ‘FOREST ESSENTIALS

BABY’. She submits that the appellant has been using the trade mark

‘FOREST ESSENTIALS’ since the year 2000, and its mark ‘FOREST

ESSENTIALS BABY’ since the year 2006, that is, much prior to the

FAO(OS)(COMM) 111/2024 Page 12 of 31

respondents. Its large turnover and availability through various modes

shows its reputation and goodwill.

31. She submits that the respondents are using deceptively similar

marks for the same range of goods, namely, massage oils, soaps,

lotions, etc.. She submits that as the goods are identical, it is even

more necessary that the marks of the parties are different. In support,

she places reliance on Shree Nath Heritage Liquor (P) Ltd. v. Allied

Blender & Distillers (P) Ltd., 221 (2015) DLT 359, Hamdard

National Foundation (India) & Anr. v. Sadar Laboratories Private

Limited, 2022 SCC OnLine Del 4523 and Amba Shakti Steels Ltd. v.

Sequence Ferro Private Limited, 2024 SCC OnLine Del 6179.

32. She submits that the learned Single Judge has also applied an

incorrect test by comparing the marks by keeping them side by side

and by holding that the confusion must subsist for a long period of

time, must be widespread, and that the customers are expected to

verify the origin of products. Placing reliance on the judgment of this

Court in Under Armour Inc v. Anish Agarwal & Anr., 2025 SCC

OnLine Del 3784, she submits that the said test is incorrect. Reliance

is also placed on the judgment of this Court in Google LLC. v. DRS

Logistics (P) Ltd. & Ors., (2023) 4 HCC (Del) 515, to submit that

initial confusion is sufficient to prove the misuse of the mark by the

respondents.

33. She submits that, in fact, the appellant had placed on record

multiple instances of actual confusion in the minds of the consumers,

and in this regard, she draws our attention to the emails from Hyatt

FAO(OS)(COMM) 111/2024 Page 13 of 31

and Oberoi Hotels; an Instagram comment from a user enquiring

whether the respondent no.1 is a unit of the appellant; Google search

prediction of ‘is baby forest and forest essentials same’, as well as

some additional instances of confusion.

34. She contends that the learned Single Judge has also incorrectly

found the consumers of the appellant’s products to be ‘sophisticated’

and ‘discerning’. Placing reliance on the judgment of this Court in

M/s. South India Beverages Pvt. Ltd. v. General Mills Marketing

Inc. & Anr., 2014 SCC OnLine Del 1953, she submits that, in fact,

even sophisticated customers are not immune to confusion.

35. She submits that the learned Single Judge has incorrectly relied

upon the decision in Pianotist Co. Application, (1906) 23 RPC 774,

which was in the context of expensive musical instruments such as

pianos and does not hold relevance in the present case where the

goods in question are soaps, shampoos, etc..

36. She submits that the word ‘FOREST’ is a dominant feature of

the appellant’s trademark ‘FOREST ESSENTIALS’ and has attained a

secondary meaning on account of the long standing use and marketing

and advertising of the same. It is an essential part of the trade mark of

the appellant and is being used for all its products.

37. She highlights that the respondents have already applied for and

obtained registration of the infringing mark ‘BABY FOREST’.

Placing reliance on the judgments of this Court in Rajendra

Vardichand Jagetia & Anr. v. Modern Mold Plast Limited, 2024

SCC OnLine Del 8322, Chaavi Poplai & Anr. Rajesh Chugh & Anr.,

FAO(OS)(COMM) 111/2024 Page 14 of 31

2019 SCC OnLine Del 7165 and Automatic Electric Ltd. v. R.K.

Dhawan & Anr., 1999 SCC OnLine Del 27, she submits that a party

who has applied for a trade mark cannot dispute the inherent

distinctiveness of the mark.

38. She submits that merely because some Trade Marks bearing the

word ‘FOREST’ are registered, it does not show their use in the trade,

without which it cannot be said that the said word is generic in nature.

She further highlights that wherever such use was shown, it was a

totally different product. She places reliance on the judgment of this

Court in Century Traders v. Rishan Lal Duggar & Co., AIR 1978

Del 250 and of the Supreme Court in Corn Products Refining Co. v.

Shangrila Food Products Ltd., 1959 SCC OnLine SC 11, to submit

that mere registration of a mark is not sufficient to decide whether a

mark is ‘common to trade’ and evidence of extensive use of the same

must exist.

39. She further submits that the judgment of the Supreme Court in

Pernod Ricard India Pvt. Ltd. & Anr. v. Karanveer Singh Chhabra,

2025 SCC OnLine SC 1701, dealt with the marks ‘BLENDERS

PRIDE’ and ‘LONDON PRIDE’ and would not be applicable to the

present case as ‘FOREST’ is not a laudatory term like ‘PRIDE’.

40. She submits that, in fact, the learned Assistant Registrar of

Trade Marks, in the order dated 10.12.2025, while accepting the

objections of the respondents to the application of the appellant for

registration of its mark ‘FOREST ESSENTIALS BABY ’, has also

observed that the marks of the appellant and the respondents are

FAO(OS)(COMM) 111/2024 Page 15 of 31

deceptively similar. She submits that the respondents are, therefore,

estopped from contending to the contrary.

41. Placing reliance on the judgment of this Court in MAC

Personal Care Pvt. Ltd. & Anr. v. Laverana GMBH & Co. KG &

Anr., 2016 SCC OnLine Del 530, she submits that the use, if any, by

the respondents of its Trade Mark can also not come to the aid of the

respondents inasmuch as the adoption of the mark itself was

dishonest. Again, placing reliance on the undertaking of the

respondents not to use the marks ‘SAUNDARYA’ and ‘BABY

ESSENTIALS’, as recorded in the order dated 04.10.2023 of the

learned Single Judge, she submits that it is only when confronted, that

the respondents gave up the use of the said Trade Marks, however,

continued to use the Challenged Marks.

42. She further submits that the appellant has a good prima facie

case and the balance of convenience also lies in favour of the

appellant and against the respondents, for which an interim order of

injunction ought to have been passed by the learned Single Judge.

SUBMISSIONS OF THE LEARNED SENIOR COUNSEL FOR

THE RESPONDENTS:

43. Mr.Jayant Mehta, the learned senior counsel appearing for the

respondents, on the other hand, submits that the trade mark of the

appellant is ‘FOREST ESSENTIALS’ which is totally distinct from

the Challenged Marks.

44. He submits that the appellant has not obtained registration in the

FAO(OS)(COMM) 111/2024 Page 16 of 31

trade marks like ‘BABY ESSENTIALS’, ‘BABY FOREST’ or

‘BABY FOREST ESSENTIALS’. It is only when this was highlighted

by the respondents before the learned Single Judge, that the appellant,

with a mala fide intent, applied for registration of its mark ‘FOREST

ESSENTIALS BABY’. The same was opposed by the respondents,

not on the ground of deceptive similarity but on the ground of its mala

fide adoption. He submits that the findings of the learned Assistant

Registrar are to be read in that light. He further highlights that in the

legal notice sent by the appellant prior to the filing of the suit, the

marks ‘FOREST ESSENTAILS BABY’ and ‘FOREST

ESSENTIALS-BABY ESSENTIALS’ were not even mentioned.

45. He submits that to classify its miniscule range of baby care

products, the appellant uses the term ‘Mother & Child’ on its website.

Upon clicking, the webpage opens with the heading ‘Mother & Baby

Care’ website. He submits that it appears that during the pendency of

the suit, the appellant has changed the category name to ‘Mom &

Baby’.

46. He submits that the mark of the appellant is a composite mark

and the appellant cannot claim any monopoly over the word

‘FOREST’. He submits that there are over 100 registrations in Class 3

marks containing the word ‘FOREST’ which shows that it is a very

commonly used word in cosmetic and skin care products to suggest

that ingredients are organic or herbal or having connection with

Ayurveda. He submits that the appellant has failed to establish that the

public associates the word ‘FOREST’ only with the appellant in

FAO(OS)(COMM) 111/2024 Page 17 of 31

respect of baby care products.

47. He submits that the adoption of the mark by the respondents

was also bona fide inasmuch as the respondents deal with ayurvedic

products derived from forest products. He submits that the

respondents have large variety of baby care products for which it uses

its mark ‘BABY FOREST’ and ‘BABY FOREST-SOHAM OF

AYURVEDA’. It also has a registration in the said marks. On the

other hand, the appellant has shown no actual use of its marks ‘BABY

ESSENTIALS’ and/or ‘BABY FOREST ESSENTIALS ’. The

appellant has an extensive range of products targeted towards adults

and out of its over 250 products, only 3-6 products are for baby care.

48. As far as evidence of actual confusion is concerned, he submits

that emails from Hyatt and Oberoi Hotels are not only identically

worded, but have come only after the cease and desist notice of the

appellant, showing that they are procured for the purposes of the suit.

Similarly, the Google search can be manipulated. He submits that, in

any case, these are matters of evidence and would not prejudice the

respondents at this stage.

49. He submits that the labels used for the products are entirely

distinct and there is no likelihood of confusion being caused. The

‘Tree’ logo of the appellant and the sapling used by the respondents

are visually very different. He submits that the appellant has in fact

not disclosed that it has used very different ‘Tree’ logos over the

years.

50. He also highlights that the appellant and the respondents deal in

FAO(OS)(COMM) 111/2024 Page 18 of 31

super luxury sector where the customer is more sophisticated and can

make out the distinction of the source of the products negating any

likelihood of confusion. He submits that in addition to its main trade

mark ‘FOREST ESSENTIALS’, the appellant also prominently uses

the word ‘DASAPUSHPADI’ on all its products pertaining to baby

care.

51. Placing reliance on the judgment of the Supreme Court in

Wander Ltd. & Anr. v. Antox India P. Ltd., 1990 Supp SCC 727, he

submits that as there is no illegality in the order passed by the learned

Single Judge, this Court would not, only on a re-appreciation of

evidence, upset the Impugned Order.

52. He submits that much has been made of the respondents

changing its corporate name. He submits that the respondents have

changed its corporate name as they were already using the mark

‘BABY FOREST’ for their products and, therefore, no mala fide can

be attributed to the respondents for the same. Similarly, the

respondents without prejudice to their rights and contentions and only

in matter of good faith had submitted before the learned Single Judge

not to use the marks ‘SAUNDARYA’ and ‘BABY ESSENTIALS’,

however, the same cannot be read to mean that the respondents had

any mala fide intent in adopting these marks.

ANALYSIS AND FINDINGS:

53. At the outset, we would remind ourselves of the limited

jurisdiction that we exercise as an appellate court against an interim

FAO(OS)(COMM) 111/2024 Page 19 of 31

order. We are not to interfere with the exercise of discretion of the

learned Single Judge and substitute it with our own discretion, except

where the order of the learned Single Judge is shown to have been

passed in a perverse manner ignoring the settled principles of law. In

this regard, we would refer to the celebrated judgment of the Supreme

Court in Wander Ltd. (supra), where the Supreme Court emphasised

as under:

“13. On a consideration of the matter, we

are afraid, the appellate bench fell into error

on two important propositions. The first is a

misdirection in regard to the very scope and

nature of the appeals before it and the

limitations on the powers of the appellate

court to substitute its own discretion in an

appeal preferred against a discretionary

order. The second pertains to the infirmities in

the ratiocination as to the quality of Antox's

alleged user of the trademark on which the

passing-off action is founded. We shall deal

with these two separately.

14. The appeals before the Division Bench

were against the exercise of discretion by the

Single Judge. In such appeals, the appellate

court will not interfere with the exercise of

discretion of the court of first instance and

substitute its own discretion except where the

discretion has been shown to have been

exercised arbitrarily, or capriciously or

perversely or where the court had ignored the

settled principles of law regulating grant or

refusal of interlocutory injunctions. An appeal

against exercise of discretion is said to be an

appeal on principle. Appellate court will not

reassess the material and seek to reach a

conclusion different from the one reached by

the court below if the one reached by that

court was reasonably possible on the material.

The appellate court would normally not be

FAO(OS)(COMM) 111/2024 Page 20 of 31

justified in interfering with the exercise of

discretion under appeal solely on the ground

that if it had considered the matter at the trial

stage it would have come to a contrary

conclusion. If the discretion has been

exercised by the trial court reasonably and in

a judicial manner the fact that the appellate

court would have taken a different view may

not justify interference with the trial court's

exercise of discretion. After referring to these

principles Gajendragadkar, J. in Printers

(Mysore) Private Ltd. v. Pothan Joseph : (SCR

721)

“... These principles are well established,

but as has been observed by Viscount Simon

in Charles Osenton & Co. v. Jhanaton „...the

law as to the reversal by a court of appeal of

an order made by a judge below in the

exercise of his discretion is well established,

and any difficulty that arises is due only to the

application of well settled principles in an

individual case‟.”

The appellate judgment does not seem to defer

to this principle.”

54. We would also summarise the various principles under the

Trade Mark law and on the basis of which the respective claims of the

parties are to be judged.

55. Where the mark of the plaintiff is registered and the claim is

one of infringement of such Trade Mark, injunction must follow

where the impugned mark is deceptively similar to the registered

mark, especially, where it is used in relation to goods or services in

respect of which the Trade Mark is registered.

56. Where the mark is not registered, the proprietor of such mark

can seek an injunction on basis of passing off of the said mark, where

the test to be applied would be whether the use of the complained

FAO(OS)(COMM) 111/2024 Page 21 of 31

mark by the defendant, keeping in view the surrounding

circumstances, like packaging, lable, market conditions, etc., is likely

to cause confusion. While comparing the marks they are not to be

placed side by side but compared by having regard to relevant

surrounding circumstances. The test to be applied is from the stand

point of an average purchaser with imperfect recollection. In Cadila

Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73,

the Supreme Court laid down the parameters for testing a claim of

passing off, as under:

“35. Broadly stated, in an action for

passing-off on the basis of unregistered trade

mark generally for deciding the question of

deceptive similarity the following factors are

to be considered:

(a) The nature of the marks i.e. whether the

marks are word marks or label marks or

composite marks i.e. both words and

label works.

(b) The degree of resembleness between

the marks, phonetically similar and

hence similar in idea.

(c) The nature of the goods in respect of

which they are used as trade marks.

(d) The similarity in the nature, character

and performance of the goods of the

rival traders.

(e) The class of purchasers who are likely

to buy the goods bearing the marks they

require, on their education and

intelligence and a degree of care they

are likely to exercise in purchasing

and/or using the goods.

(f) The mode of purchasing the goods or

placing orders for the goods.

(g) Any other surrounding circumstances

which may be relevant in the extent of

FAO(OS)(COMM) 111/2024 Page 22 of 31

dissimilarity between the competing

marks.

36. Weightage to be given to each of the

aforesaid factors depending upon facts of each

case and the same weightage cannot be given

to each factor in every case.”

57. The Supreme Court, in Pernod Ricard (supra), explained the

differences between a claim of infringement and passing off, as under:

“29. Before delving further, it is important

to note that a passing off action is a common

law remedy designed to protect the goodwill

and reputation of a trader against

misrepresentation by another, which causes or

is likely to cause confusion among consumers.

As observed by James L.J, in Singer

Manufacturing Co v. loog, “no man is entitled

to represent his goods as being the goods of

another man”. A passing off action applies to

both registered and unregistered marks, and is

rooted in the principle that one trader should

not unfairly benefit from the reputation built

by another. In contrast, an action for

trademark infringement is a statutory remedy

under the Trade Marks Act, 1999 available

only in relation to registered trademarks. It is

intended to safeguard the exclusive

proprietary rights that registration confers.

29.1. A key distinction between the two lies

in the requirements of proof. In an

infringement action, the plaintiff is not

required to establish the distinctiveness or

goodwill of the mark - registration, by itself,

affords the right to seek protection. If the

impugned mark is shown to be identical or

deceptively similar to the registered mark, no

further evidence of confusion or deception is

necessary. However, in a passing off action,

the plaintiff must prove: (i) the existence of

goodwill or reputation in the mark, (ii) a

misrepresentation made by the defendant, and

FAO(OS)(COMM) 111/2024 Page 23 of 31

(iii) a likelihood of damage to the plaintiff's

goodwill.

29.2. While an intent to deceive is not a

necessary element in either action, passing off

requires proof of a likelihood of confusion or

deception. It is well settled that actual

deception or damage need not be proved - the

test is whether confusion is probable in the

mind of the average consumer due to the

similarity in the marks or the overall get-up of

the goods.

29.3. Another key distinction is that in a

passing off action, the defendant's goods need

not be identical to those of the plaintiff - they

may be allied or even unrelated, provided the

misrepresentation is such that it affects or is

likely to affect the plaintiff's business

reputation. In contrast, infringement requires

that the unauthorised use relate to the same or

similar goods or services for which the

trademark is registered.

29.4. Additionally, in an infringement suit,

it is not necessary for the plaintiff to establish

use of the mark; even a registered proprietor

who has not commenced use can sue for

infringement. However, in a passing off action,

the plaintiff must demonstrate prior and

continuous use, and that the mark has

acquired distinctiveness in the minds of the

public.

29.5. Thus, while both actions seek to

prevent unfair competition and protect against

consumer confusion, an action for

infringement offers broader statutory

protection based solely on registration and

ownership. In contrast, passing off is grounded

in equitable principles and imposes a higher

evidentiary burden to safeguard commercial

goodwill under common law.”

58. In the above judgment, the Supreme Court also explained that

in case of composite marks, it is the overall impression created by the

FAO(OS)(COMM) 111/2024 Page 24 of 31

mark, that is relevant, and the proprietor cannot claim exclusive rights

over the individual components, particularly, non-distinctive or

descriptive elements. It was held that the foundational principle in

Trade Mark law is that the marks must be compared as a whole and

not by dissecting them into individual components. This principle is

commonly known as ‘anti-dissection rule’. At the same time, in

determining whether a mark is deceptively similar to another, courts

often consider the dominant feature of the mark, that is, the element

which is most distinctive, memorable and likely to influence consumer

perception. This test is called ‘dominant feature test’. It was held that

the dominant feature of a mark is typically identified based on factors

such as its visual and phonetic prominence, placement within the

mark, inherent distinctiveness, and the degree of consumer association

it has generated.

59. The Supreme Court summarised the test and the legal principles

governing the grant of injunction in a Trade Mark claim, as under:

“36. The Trade Marks Act, 1999 does not

prescribe any rigid or exhaustive criteria for

determining whether a mark is likely to

deceive or cause confusion. Each case must

necessarily be decided on its own facts and

circumstances, with judicial precedents

serving to illuminate the applicable tests and

guiding principles rather than to dictate

outcomes.

36.1. As a general rule, a proprietor whose

statutory or common law rights are infringed

is entitled to seek an injunction to restrain

further unlawful use. However, this remedy is

not absolute. The considerations governing the

grant of injunctions in trademark infringement

actions broadly apply to passing off claims as

FAO(OS)(COMM) 111/2024 Page 25 of 31

well. That said, a fundamental distinction

remains: while a registered proprietor may,

upon proving infringement, seek to restrain all

use of the infringing mark, a passing off action

does not by itself confer an exclusive right. In

appropriate cases, the court may mould relief

in passing off so as to permit continued use by

the defendant, provided it does not result in

misrepresentation or deception.

36.2. The grant of injunction - whether for

infringement or passing off - is ultimately

governed by equitable principles and is subject

to the general framework applicable to

proprietary rights. Where actual infringement

is established, that alone may justify injunctive

relief; a plaintiff is not expected to wait for

further acts of defiance. As judicially

observed, “the life of a trademark depends

upon the promptitude with which it is

vindicated.”

36.3. The principles laid down in American

Cyanamid Co. v. Ethicon Ltd. continue to

guide the Courts while determining interim

injunction applications in trademark cases.

The following criteria are generally applied:

(i) Serious question to be tried/triable

issue: The plaintiff must show a genuine and

substantial question fit for trial. It is not

necessary to establish a likelihood of success

at this stage, but the claim must be more than

frivolous, vexatious or speculative.

(ii) Likelihood of confusion/deception:

Although a detailed analysis of merits is not

warranted at the interlocutory stage, courts

may assess the prima facie strength of the case

and the probability of consumer confusion or

deception. Where the likelihood of confusion is

weak or speculative, interim relief may be

declined at the threshold.

(iii) Balance of convenience: The court

must weigh the inconvenience or harm that

may result to either party from the grant or

refusal of injunction. If the refusal would likely

FAO(OS)(COMM) 111/2024 Page 26 of 31

result in irreparable harm to the plaintiff's

goodwill or mislead consumers, the balance of

convenience may favor granting the

injunction.

(iv) Irreparable harm: Where the use of

the impugned mark by the defendant may lead

to dilution of the plaintiff's brand identity, loss

of consumer goodwill, or deception of the

public - harms which are inherently difficult to

quantify - the remedy of damages may be

inadequate. In such cases, irreparable harm is

presumed.

(v) Public interest: In matters involving

public health, safety, or widely consumed

goods, courts may consider whether the public

interest warrants injunctive relief to prevent

confusion or deception in the marketplace.

36.4. In conclusion, the grant of an interim

injunction in trademark matters requires the

court to consider multiple interrelated

factors: prima facie case, likelihood of

confusion, relative merits of the parties'

claims, balance of convenience, risk of

irreparable harm, and the public interest.

These considerations operate cumulatively,

and the absence of any one of these may be

sufficient to decline interim relief.”

60. Applying the above test to the facts of the present case, the

marks of the appellant are ‘FOREST ESSENTIALS’, ‘FOREST

ESSENTIALS BABY’ and ‘FOREST ESSENTIALS -BABY

ESSENTIALS’ while the Trade Mark of the respondents is ‘BABY

FOREST’. We reproduce the same hereinbelow:

FAO(OS)(COMM) 111/2024 Page 27 of 31

61. Both, the appellant and the respondents, deal in ayurvedic

products.

62. The mark of the appellant is a composite mark, with none of the

two words, ‘forest’ or ‘essential’, qualifying as a dominant feature of

the said composite mark. Therefore, the anti-dissection rule must be

applied. Furthermore, it was the own case of the appellant before the

learned Registrar of Trade Marks at the time of the registration of its

mark ‘FOREST ESSENTIAL’, that the use of the said words together

was a unique juxtaposition that rendered the mark to be inherently

distinctive.

63. Similarly, the mark of the respondents is ‘BABY FOREST’,

again a composite mark. Hence, the registration of the mark ‘BABY

FOREST’ by the respondents cannot be treated a bar on the

respondents to contend that the word ‘FOREST’ is generic. The

judgments of this Court in Rajendra (supra), Chaavi Poplai (supra),

Automatic Electric Ltd. (supra) and Century Traders (supra); and of

the Supreme Court in Corn Products (supra) cannot come to the aid of

Appellant’s marks Respondent’s marks

FOREST ESSENTIALS

BABY FOREST

FOREST ESSENTIALS BABY

FOREST ESSENTIALS- BABY

ESSENTIALS

FAO(OS)(COMM) 111/2024 Page 28 of 31

the appellant.

64. Even otherwise, ‘FOREST’ being a dictionary word, to claim

any monopoly over the same, stringent evidence test of having

required a secondary meaning in the same would be required from the

plaintiff/appellant.

65. Furthermore, the adoption of the mark by the respondents, at

least at this stage, cannot also be said to be mala fide or dishonest. The

respondents claim to be dealing with baby products which are

ayurvedic and derived from the forest. Merely because it gave up its

claim for ‘SOUNDARYA’ and/or ‘BABY ESSENTIALS’ or changed

its corporate name, in our view, at least prima facie, not sufficient to

attribute dishonest intention to the respondents for the adoption of its

mark. The judgment of this Court in MAC Personal Care (supra)

therefore is not applicable to the facts of the present case.

66. Applying the test of a person with imperfect recollection, we do

not find the marks of the appellant and the respondents to be

deceptively similar.

67. While in the present case, the appellant has stated that there is

proof of actual deception and confusion by the use of the mark by the

respondents, in our view, the said evidence is to be tested at the time

of final hearing of the suit. In making our above observation, we are

mindful of the timing of the letters from the Hyatt and Oberoi Hotels;

the Instagram comment and the response on the Google Search

Engine. We, therefore, are of the opinion that the judgments of this

Court in Amba Shakti (supra), Hamdard National Foundation

FAO(OS)(COMM) 111/2024 Page 29 of 31

(supra), South India Beverages (supra) and Shree Nath Heritage

(supra) cannot come to the aid of the appellant.

68. The order of the learned Assistant Registrar of Trade Marks is

also to be read in the context of the objection that was raised by the

respondents for opposing the application of the appellant seeking

registration of its mark ‘FOREST ESSENTIALS BABY’. The

respondents had laid emphasis on the mala fide of the appellant in

applying for the same only to defeat the rights of the respondents in

the suit.

69. As far as the ‘Tree’ logo and overall packaging are concerned,

we again do not find the same to be sufficient to, at least at this stage

where we are to apply the trinity test of good prima facie case, balance

of convenience and irreparable harm and injury, to be made out by the

appellant for grant of injunction. Furthermore, applying the test of

Wander Ltd. (supra), no case for interference with the order of the

learned Single Judge is made out by the appellant.

70. Having said the above, we must herein observe that we do agree

with the learned senior counsel for the appellant that the learned

Single Judge has erred in defining the ‘initial confusion test’. In fact, a

Division Bench of this Court in Under Armour Inc., (supra) has

already adversely commented upon the same by observing as under:

“102. It is apparent from the above

paragraph that the learned Single Judge

accepted that the customer who comes across

the impugned marks may be faced with

“transient wonderment”, but being an

informed customer would proceed to find out

the differences between the products. In our

FAO(OS)(COMM) 111/2024 Page 30 of 31

view, if the customer looking at the impugned

marks associates the same with the appellant's

marks even though for a brief period, the

appellant's trademarks would be infringed on

the plain reading of Section 29(1)/Section

29(2) and even Section 29(4) of the TM Act.

The duration of the confusion in the minds of

the customer is not material. The fact that the

customer is confused, even if it be

momentarily, would be sufficient to establish

infringement of trademark. Thus, the question

to be considered by the court was essentially

whether a customer looking at the impugned

trademarks would be led to believe that the

same is associated with the appellant's

trademark, even it be for a brief moment. The

fact that he may on a closer examination of

products and enquiries find that the impugned

trademarks are not associated with the

appellant's trademarks would not take away

from the fact that the impugned marks bear a

similarity with the appellants trade mark,

which led to the confusion. Similarly, if a

customer of average intelligence and imperfect

recollection, who seeks the appellant's product

UNDER ARMOUR is for a brief moment

deceived to think the respondent's product as

associated with the appellants mark, the

appellants action for infringement has to be

sustained as the test of likelihood of confusion

would stand satisfied.

103. As noted above, in some cases, it may

be sufficient for a new entrant to merely

attract the customers of a well-known brand to

look at its product. In some cases, it would be

enough for a new entrant to get its foot in the

door. It is not necessary that the customer

must necessarily be deceived in buying the

product under a junior mark for the registered

senior mark to be infringed. If such the initial

interest is elicited by any similarity with the

well-known trademark, the requirement of

Section 29 of the Act would be satisfied.”

FAO(OS)(COMM) 111/2024 Page 31 of 31

71. However, we do not find that the adoption of the above test by

the learned Single Judge itself is sufficient to upset the impugned

order, as we do agree with the final conclusion of the learned Single

Judge on facts of the case.

72. For the above stated reasons, we do not find any merit in the

present appeal. The same is, accordingly, dismissed. Pending

applications are disposed of.

73. We make it clear that any and all observations made by us

hereinabove are only prima facie in nature and shall, in no manner,

affect the adjudication of the suit.

NAVIN CHAWLA, J.

MADHU JAIN, J.

FEBRUARY 27, 2026/ns/ik