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TMI Blog2007 (1) TMI 615X X X X Extracts X X X X X X X X Extracts X X X X ..... ood 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 certain common lifestyle-related diseases like, hypertension, obesity, diabetes, osteoporosis are specially recommended to take these foods. In this manner, she is providing vast range of guaranteed organic, Chemical-free, adulteration-free foods. The plaintiff also has its registered website, namely, www. wholefoodsindia.com . She is also a brand ambassador of 'Equal', a low-calorie sweetener of Merisant India Pvt. Ltd. She also has numerous articles, on going columns in leading newspapers 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 resp ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e market in the month of November,2004. It is alleged that this adoption with a dishonest and mala fide intention to ride upon the goodwill and reputation of the plaintiff's trade mark Whole Foods amounts to an instrument of fraud in the market 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 unlawful adoption by the defendants, of the plaintiff's mark/trading style, Whole Foods would result in actual or potential customers: (a) Believing that the defendant company is endorsed by the plaintiff and the products sold by the defendants command the same level of quality and reliability that is synonymous with the products of the plaintiff; (b) Believing that the defendants have some connection/association with the plaintiff, in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nt that trademark of the defendant which is DIET WHOLE FOODS' is not the same or identical or deceptively similar to the trademark of the plaintiff and, Therefore, no action for infringement can be brought. It is argued that since the plaintiff's action is not for infringement, the defendants can escape liability in case there are added matters in the defendants' trademark/label which in fact is the case as the defendants have used the additional word DIET as prefix along with the words Whole Foods in their trademark. 10. Vacation of the injunction 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 her organization and products are filed in support. She has also filed copy of application for Sales Tax Registration which wa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... laintiff 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 have filed an application for trademark registration on 28.5.2004 wherein it is in the `proposed to be used category' which would indicate that till then the defendants had not commenced use of their trademark. Therefore, prima facie it appears that the plaintiff is a prior user of the trademark `Whole Foods'. 16. The fore question is whether the adoption of the trademark `Whole Foods' by the plaintiff is permissible. Whether it is a generic word and, if so, has acquired secondary meaning? 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? ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he plaintiff with adoption of this trademark is different from the meaning of `Whole Foods' as per the English dictionary. It, Therefore, cannot be said that strictly the products marketed by the plaintiff are descriptive of the meaning of English words `Whole Foods'. 19. The plaintiff has taken pains and has made strenuous effort to sell her concept /idea of `Whole Foods', through her 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 as per the dictionary meaning of the word `Whole Foods', the form in which grains or pulses should be taken is the one which can be taken as raw form, in contradistinction the plaintiff is not selling the said products in raw form but in processed form. However, concept of processing is differ ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 namkeens by alternative method, namely, avoiding oil and instead roasting it, preserving the same taste while ensuring that the calorie content is significantly less and decided to call it `Whole Foods', it can be treated as her unique way of adoption of the words `Whole Foods'. Still, may be she could not have claimed exclusive trademark over the same as it is an ordinary dictionary word as well. However, the adoption of this trademark `Whole Foods' with totally different connotation than 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 chara ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... word DIMMER is a generic expression. 23. What is relevant is the admission on the part of the defendants in using the word DIET WHOLE FOODS' in respect of the same products which are marketed by the defendants 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 plaintiff and they wanted their own share in the pie . It is not to suggest that the plaintiff has monopoly over these products. Any other person may enter the trade and be a competitor. Competition is healthy for not only consumers but for manufacturer as well and is, Therefore, in public interest. However, what is to be discouraged is the dishonest adoption of somebody else's trademark and trying to ride on the goodwill created by the competitor who entered the market prior in time. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... endants wherein the Court held that before grant of injunction aforesaid requisites are to be established. Learned Counsel for the defendants had also cited the judgment in the case of Jabbar Ahmed v. Prince Industries and Anr. and made the submission that as in the absence of any advertisement of the product it could not be said that the plaintiff was using the said product or had acquired distinctiveness. In that case the plaintiff had filed certain assessment orders on the basis of which it had claimed use of trademark `BELL' during the said period. The Court observed that there was nothing in these assessment orders which can even remotely indicate that the plaintiff had been manufacturing scissors/nail clippers under the said trademark. However, in the instant case the plaintiff has produced sufficient material which would show user of trade name `Whole Foods' in respect of her goods. 27. Many judgments including the case of Vijay Kumar Ahuja v. Lalita Ahuja 2002 (24) PTC 141 (Del) were cited by learned Counsel for the defendants in support of the plea that when the Trademark is an English language word nobody can claim proprietary rights over the same unless there ..... X X X X Extracts X X X X X X X X Extracts X X X X
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