Mrs. Ishi Khosla v. Anil Aggarwal and Anr.;
2007 (34) PTC 370 (Del)
Mrs. Ishi Khosla (Plaintiff) founded a sole proprietorship firm called ‘M/s. Whole Foods’, involved in the business of manufacturing and retailing ‘healthy and healing food products’. Although the Plaintiff applied for registration of the trademark – ‘Whole Foods’ somewhere around July, 2004, she had been extensively using it since 2001.
In November 2004, Plaintiff found out that products with a similar packaging under an identical trademark called ‘Diet Whole Foods’, are being sold by Defendants.
Plaintiff filed a suit for passing off as well as for infringement of Copyrightagainst the Defendant.
• ‘Diet Whole Foods’, is different from ‘Whole Foods’ as they have used the prefix ‘Diet’.
• The mark ‘Whole Foods’ can’t be protected as it is an ordinary English word used by various businesses and has not yet acquired secondary significance. It is a mere descriptive mark having direct reference to the quality of goods.
(i) Whether the adoption of the trademark ‘Whole Foods’ by the Plaintiff is permissible? Whether ‘Whole Foods’ it is a generic word, and, if so, has it acquired secondary meaning?
(ii) If the answer is in the affirmative, whether the adoption of trademark ‘Diet Whole Foods’ by the Defendants is mala fide and is likely to confuse the public?
Rationale of decision: The dictionary meaning of ‘Whole Foods’ is – natural foods which have not been processed. But the Plaintiff’s idea of ‘whole food’ is just low fat foods with nutritional value or fat foods turned into ‘healthy foods’ by processing. This is proved by the products marketed by her like rice, oils, roasted namkeen and bakery foods, which can’t be covered under the ordinary dictionary meaning.
Thus, the adoption of this trademark with totally different meaning and relentlessly selling that meaning to the buyers distinguishes the Plaintiff’s products from those of others. As a result, the trademark has acquired a secondary character. If a new idea appeals to the customers, it becomes a hit and acquires a secondary meaning, regardless of the time span of the product in the market.
Rationale of Decision: Since the defendants launched their products after around 3 years from that of the Plaintiff, they could reasonably estimate the benefits reaped by the Plaintiff and as a result, wanted their own share in the pie. This was done by clever manipulation of adding the word ‘Diet’ before the entire trademark of the Plaintiff. Their mala fide intention becomes evident by the adoption of the same writing style and similar packaging, which inevitably leads to confusion.
The relief of injunction granted to the Plaintiff was confirmed.
Author: Arunima Bishnoi, Delhi Law Faculty