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Mrs. Ishi Khosla Versus Anil Aggarwal and Anr.

2007 (1) TMI 615 - DELHI HIGH COURT

I.A. Nos. 1854 and 2761/2005 in CS (OS) No. 309 of 2005 - Dated:- 25-1-2007 - A.K. Sikri, J. For the Appellant: Ankush Mahajan and Sidharth Chopra, Advs For the Respondents: S.K. Bansal and Suwarn Ratan, Advs. JUDGMENT A.K. Sikri, J. 1. As per the averments made in the plaint, the plaintiff Mrs. Ishi Khosla founded M/s. Whole Foods', which is a sole proprietorship firm of the plaintiff. It is engaged in the business of producing and retailing healthy and healing food products' in India. .....

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elhi, Chandigarh and Gurgaon. These foods include all foods that provide good nutrition and promote good health using minimum additives, preservatives and Chemicals and are not restricted to just low fat foods. Based on this belief she started retailing health food items like rice, pulses, wheat, oils, roasted namkeens, bakery products like whole wheat bread, cookies and a range of other food items to various authorised select franchise outlets. It is also stated those who are suffering from cer .....

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and publications on health related issues in various leading magazines, newspapers. She has also authored a book "The Cholesterol Facts'. She extensively delivers lectures and conducts regular workshops for corporates, schools, hotel and airline industry. 2. In respect of the trademark "Whole Foods" it is stated that she started using this trademark in the year 2001. Since then it has been voluminously, continuously and extensively used by her in the course of trade/business .....

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e and the reputation consequently accruing thereto in the course of trade and is acknowledged to be a standard bearer of excellence in quality and business ethics. She has also applied for registration of this trademark on 27.7.2004 vide Application No. 01298649 in Class 30. 3. It is further the case of the plaintiff that she is also the owner of copyright in artistic work' comprised in the style of writing and representation of the trademark "Whole Foods", as also in the get-up, l .....

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products of the plaintiff are widely sought after by the general public and within the trade circles and Therefore, sales have been sharply increasing over the years. In financial year 2001-2002 turnover was ₹ 24.69 lacs which rose to ₹ 62.39 lacs in 2003-2004. This shows that the plaintiff under the said trademark has acquired enviable goodwill and reputation amongst the public at large so much so that the mark "Whole Foods" has come to be exclusively identified and assoc .....

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arket as they are nothing short of an unmistakable and deliberate imitation of the plaintiff's corresponding products and packaging. It is stated that same food items as diet food' with the same name is going to confuse the buyer that the goods which are sold by the defendants are that of plaintiff and, Therefore, the defendants are guilty of passing off as well as infringing the copyright of the plaintiff in its 'Whole Foods' packaging inasmuch as the plaintiff submits that the .....

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trademark "Whole Foods"; (c) Subscribing to the products of the defendant company or dealing in some manner with the defendants under their impugned trademark believing them to be licensed or authorized by the plaintiff to use the trademark "Whole Foods". 6. Along with the plaint the plaintiff has filed IA. 1854/2005 and the suit with this is came up for preliminary hearing on 9.3.2005 when the Court granted ex-parte ad interim injunction in terms of para 28(a) and (b) of the .....

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ot;Whole Foods". It is further submitted that the plaintiff is not the registered proprietor of the trademark "Whole Foods" and, Therefore, case set up by the plaintiff is that of passing off which the plaintiff has not been able to prove. For the purpose of passing off the plaintiff has to establish prior use, distinctiveness and reputation and the documentary evidence filed by the plaintiff does not establish these ingredients of passing off. It is stated that no documentary evi .....

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protected as it is a descriptive mark having direct reference to the character and quality of the goods. It is also claimed that the expression "Whole Foods" is common to trade and the said expression is being used by various businesses. Such a trademark cannot be protected unless it has acquired secondary significance which has not happened in this case. 9. It is also the case of the defendant that trademark of the defendant which is "DIET WHOLE FOODS' is not the same or ide .....

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on order is also prayed for on the ground that the plaintiff has made a misrepresentation as her trademark has not yet been accepted for registration as falsely claimed by her. 11. The plaintiff has filed affidavit dated 15.2.2006 along with which certain documents are also filed. It is stated in this affidavit that she started this business of producing and selling health food products through 'Whole Foods-the health food shop' since 2001 and Web Pages from the Internet which refer to h .....

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t; and "FOODS" and was not aware of it connoting a primary meaning. She has reiterated that food products under the trademark "Whole Foods" are associated with her organization exclusively and that is how consumers and trade associates perceive it. 12. Counsel for both the parties advanced their respective submissions on the lines of averments made in the plaint and written statement respectively, note whereof is taken above. 13. I have considered the arguments of both the pa .....

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er as she had adopted the trademark Whole Foods' in the year 2001. Though this is disputed by the defendants alleging that no evidence was filed, the plaintiff has filed various documents along with her affidavit dated 15.2.2006 which would show that the plaintiff is the user of trademark Whole Foods' from 2001. Some of the documents which are produced along with the plaint and thereafter with the additional affidavit in support of this claim are as under: 1) Copy of additional represent .....

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st of documents filed by plaintiff on 11/5/2005] 4) Copy of certificate of registration from Weights and Measures Department dated 24th December,2002 issued in favor of the plaintiff [page-7 of the list of documents filed by plaintiff on 11/5/2005]. 5) Copy of Sales Tax Assessment Orders of the plaintiff, from the Sales Tax Authority for the year 2001-02, 2002-03, 2003-04 [page 8 to 15 of the list of documents filed by the plaintiff on 11/5/2005] 15. On the other hand the defendants claim to hav .....

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If the answer to this question is in the affirmative, whether the adoption of trademark "DIET WHOLE FOODS' by the defendants is mala fide and such dishonest adoption is likely to confuse the public? 17. The word Whole Foods' is an English word and its dictionary meaning is as follows: Whole-food - food that has not had any of its natural features taken away or any artificial substances added. a whole food shop/cookbook/diet Whole-foods - Whole foods are natural foods which have not .....

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r health even when they are not processed. On the other hand, the adoption of trademark Whole Foods' by the plaintiff is with emphasis on healthy and healing food products. She is a nutritionist and came up with the idea that for better health people should take healthy foods which provide good nutrition and promote good health. Her concept as explained in the plaint is to promote the foods in a form which promote good health using minimum additives, preservatives and Chemicals. In other wor .....

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se of these Chemicals would be minimal so that they do not lose their basic quality and ingredients of being healthy foods. Further, according to her even those foods which are not just low fat foods can also be processed in such a manner that they can be treated as "healthy foods". It is because of this reason that in addition to natural foods, the plaintiff has been marketing products like roasted namkeen and even bakery foods which by no stretch of imagination can be covered by the .....

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r Website and various articles written by her which have appeared in magazines, newspapers and journals. Reading of these articles would clearly show that her USP is her range of high-nutrient, adulteration-free snacks, which are a tasty alternative to oil-rich ones and at the same time maintaining the taste which one gets from some oil-rich ones. For example, green pulses are processed pulses which can normally be taken in a fried form i.e. fried in oil are sold by her in roasted form. Whereas .....

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not remain whole food as per the definition contained in English dictionary as it is processed. At the same time she has adopted different techniques for processing. The idea of her concept can be seen from one of the articles where she states that dispelling the myth that health food equals low fat she has stocked an organic chemical free range of grains and pulses, whole wheat bread and bakery products made with olive oil. Thus her concept of good health as spread by her is that tasty food lik .....

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go by the ordinary dictionary meaning of the word Whole Foods' but would read behind it the concept developed by the plaintiff . Therefore, in a matter like this it cannot be said that it is mere adoption of the dictionary word Whole Foods' over which plaintiff cannot claim monopoly. 20. In a modern world where information is a key factor and the information is available with the click of a mouse on a computer from the internet, its an era of expansion. In today's world an idea' .....

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n goes on strict diet and does not consume oily rich or those foods termed as bad' and unwholesome', it may work for short period but such a dieting may not last long. Therefore, most of such dietary plans have failed. It is because of this reason that nutritionists have from time to time developed various diet plans. Going by this stark reality and Indian food habits, if the plaintiff got the idea to make the same food like bhujiya, crispy potato, chips, papri, mathis, bhelpuri and namk .....

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as provided in the dictionary and selling her meaning of Whole Foods' to those who are likely users of this product would definitely give it a distinctive meaning capable of distinguishing her products from those of others. It can also be said that because of her untiring and relentless efforts in projecting what she means by Whole Foods', it has acquired secondary character and has come to be associated with the plaintiff's products. To acquire secondary meaning/distinctive meaning .....

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. The Court went to the extent of holding that in an action for passing off registration of the impugned trademark is irrelevant and no actual proof of damages or fraud is necessary. In that case the Court found that the appellant was admittedly a prior user of trademark RAJA RANI' vis-a-vis the respondent. The said trademark had some novelty and attractiveness is evident from the fact that both the appellant and the respondents have applied for registration of that mark in their favor. Appl .....

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's products. Another interesting aspect which is to be noted is that the defendants have also applied for trademark registration using the words Whole' and Foods'. Thus the defendants themselves are attempting to claim trademark signification in respect of Whole Foods'. Therefore, in this view of the matter they would be precluded from alleging the words of the plaintiff's trademark Whole Foods' being incapable of trademark signification as held by this Court in the case .....

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fendants with same techniques and same benefits. As on the date of filing of the application by the defendants for registration of this mark in 2004, they had not started marketing their products under this label. Even if it is taken that the defendants' products hit the market in the year 2004, the plaintiff had been marketing her products with trademark Whole Foods' since the year 2001. Obviously, the defendants could see through the benefits of products as conceptualized by the plaint .....

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is sought to be done by the defendants by clever manipulation, namely, adding the word DIET' in their mark after adopting identically the entire trademark of the plaintiff i.e. Whole Foods'. This intention of the defendants becomes manifest as they have also adopted same style of the trademark and same labels/packing etc. I may mention that during arguments learned Counsel for the defendant conceded this and offered to change the writing style as he accepted that artistic feature could .....

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ld that mere addition of the word INDIA' could not be held to be a distinguishing factor as the said word had no trademark value or signification. 24. In the case of Munday v. Carey 1905 RPC 273 the Court held: ...I believe that it is a rank case of dishonestly, and where you see dishonesty, then even though the similarity were less than it is here, you ought, I think, to pay great attention to the items of similarity, and less to the items of dissimilarity. 25. Further, in the case of Midla .....

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hed in the instant case. The plaintiff has been able to show, prima facie, prior use, distinctiveness as well as reputation which the plaintiff's trademark Whole Foods' has acquired. Judgment of the Supreme Court in the case of American Home Products Corporation v. Mac Laboratories Pvt. Ltd AIR1986SC137 would, Therefore, be of no assistance to the defendants wherein the Court held that before grant of injunction aforesaid requisites are to be established. Learned Counsel for the defendan .....

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