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. It carries on business through various franchise outlets located at Gurgaon and Chandigarh. The plaintiff claims that she is a leading Health Counsellor and a former Senior Nutritionist with the Escorts Heart Institute and Research Center, New Delhi. She feels pride in bringing forth a unique concept of 'one-stop shop' which makes available and sells a wide range of `healthy and healing foods' to consumers through its `Whole Foods Shop' outlets located in major cities such as New Delhi, 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 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 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 to the extent that the trademark 'Whole Foods' has always been perceived as indicative of the source of the plaintiff with respect to food items, so much so that those who buy or are keen on buying `health foods' bearing the trademark 'Whole Foods' always associate the same with the plaintiff and none else. She, thereforee, states that she is the proprietor of the trademark 'Whole Foods' in India by virtue of priority in adoption, long, continuous and extensive use 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, layout, arrangement of features, colour scheme and appearance of the packaging within the meaning of Section 2(c) of the Copyright Act, 1957 and is, thereforee, entitled to copyright protection under Section 13 of the aforesaid Act. She states that she has made its packaging unique and distinctive in order to distinguish the goods from those of others.
4. It is claimed that because of superior quality of food products manufactured and marketed by her under the trademark 'Whole Foods' the products of the plaintiff are widely sought after by the general public and within the trade circles and thereforee, sales have been sharply increasing over the years. In financial year 2001-2002 turnover was Rs. 24.69 lacs which rose to Rs. 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 associated with the plaintiff in India and none else.
5. The plaintiff is aggrieved by the adoption of identical trademark 'Whole Foods' by the defendant No. 2 with identical/deceptively similar packaging when she found such a product in the 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, thereforee, 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 terms of a direct nexus or affiliation with 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 said application. After the service of summons upon them, defendants moved application for vacation of the injunction order which is IA.2761/2005. It is for this reason that both these applications were heard together and are being disposed of with this order.
7. In the written statement, reply to injunction application as well as application for vacation of injunction, the defense of the defendant is that the trademark of the defendant is 'DIET WHOLE FOODS' which is different from 'Whole Foods'. It is further submitted that the plaintiff is not the registered proprietor of the trademark 'Whole Foods' and, thereforee, 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 evidence has been filed to establish the claims that the plaintiff is in the business since 2001. It is further stated that the documents filed by the plaintiff do not support the sales figure as claimed. The plaintiff has also not filed on record any advertisements, sale invoices or orders. It is alleged that the activities of the plaintiff are very limited.
8. The claim of the plaintiff is also contested on the ground that the mark 'Whole Foods' is an ordinary English word and cannot be 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 identical or deceptively similar to the trademark of the plaintiff and, thereforee, 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 was granted on 8.1.2002. Though Sales Tax Assessment Form for the year 2001-2002 related to Crockery business it is mentioned that it is a clearly typographical error as she was never engaged in the business of Crockery. It is also explained in the affidavit that it was her bona fide belief that her trademark/trade name was created by the combination of words 'WHOLE' 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 parties and have also gone through the plethora of judgments cited by them, reference whereof shall be made in the course of my discussion.
14. It is not in dispute that trademark `Whole Foods' as used by the plaintiff has not so far been registered though application of this has been made by the plaintiff in the year 2004. thereforee, counsel for the plaintiff also conceded that matter was to be examined on the touchstone of passing off action. His submission was that the plaintiff was prior user 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 representation sheet of the plaintiff in respect of its mark `Whole Foods', showing the user date as 2001-[page 5 of the list of documents filed along with the plaint]
2) Copy of certificate of Registration from the Local Sales Tax Authority showing the plaintiff as being in business under the mark `Whole Foods' from the year 2001 [page 1 of the list of documents filed by plaintiff on 11/5/2005]
3) Copy of certificate of Registration from the Central Sales Tax Authority dated 2001 [page 2 of the list 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 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. thereforee, 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
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 been processed: The children insist on eating only whole foods, like beans and brown rice.'
18. What is the dictionary meaning ascribed to `Whole Foods'. Whole Foods are natural foods which have not been processed. The natural foods would necessarily be healthy and healing food products. Normally many whole foods may fall in this category. Thus certain foods when taken in raw form and as natural food may themselves be good for health. However, certain foods may not necessarily be good for 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 words her idea of `Whole Food' is just low fat foods with nutritional value. Thus the products marketed by the plaintiff like rice, pulses, oils, frosted namkeens, bakery products are not necessarily natural foods which have not been processed. thereforee, they do not subscribe to the dictionary meaning of word `Whole Foods'. On the contrary, the plaintiff has conceptualized these foods which will be processed and even some additives, preservatives or Chemicals can also be used. However, the use 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 ordinary dictionary meaning of the word 'Whole Foods'. Thus the concept of `Whole Foods' by the plaintiff with adoption of this trademark is different from the meaning of `Whole Foods' as per the English dictionary. It, thereforee, 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 different. Instead of selling it in fried form she believes that to maintain it as a healthy food it should be taken in roasted form without compromising on taste. thereforee, the product of the plaintiff does 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 like crispy potato, chips, papri, mathis, bhelpuri and namkeens are not to be avoided as she knows that they are irresistible. Thus she has packaged these very `goodies' in a different form which is free from oil with the motto of selling good food and wholesome as well. Adoption of the trademark `Whole Foods' with aforesaid hypothesis and concept has to be viewed differently. If the public at large which is to consume the `Whole Foods' as envisaged by the plaintiff such a public would not go by the ordinary dictionary meaning of the word `Whole Foods' but would read behind it the concept developed by the plaintiff . thereforee, 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' which may be unique and 'out of box' can click and become popular overnight and within no time. The plaintiff understood the psychology of today's generation which is health freak. At the same time she knew it is difficult to avoid certain foods in particular form which, because of their taste, are irresistible. Old fashioned techniques of dieting, namely, advising obese, overweight and not so active people to avoid such food has not worked. Experience has shown that even if a person 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. thereforee, 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 character and has come to be associated with the plaintiff's products. To acquire secondary meaning/distinctive meaning it is not necessary that product is in the market for number of years, as observed earlier. If a new idea is fascinating and appeals to the consumers, it can become a hit overnight.
21. It has been held by Division Bench of this Court in the case of Century Traders v. Roshan Lal Duggar PTC Supp (1) 720(Del that for claiming relief it is not necessary to show that the trademark had been used for a considerable length of time. Even a single actual user with an intent to continue such use is enough. 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. Applications of both the parties were pending. The Court in these circumstances was of the opinion that registration of the mark in favor of either party would create a situation in which the action for infringment would be relevant and thus found that prima facie case was made out by the appellant.
22. In the present case sales of plaintiff's products in the financial year 2001-2002 was Rs. 24.69 lacs which rose to Rs. 62.39 lacs in 2003-2004. This shows the reputation of the plaintiff'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'. thereforee, 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 of Automatic Electric Limited v. R.K. Dhawan and Anr. 1999 (19) PTC 81 wherein the Court observed as under:.The fact that the defendant itself has sought to claim trade proprietary right and monopoly in 'DIMMER ROT', it does not lie in their mouth to say that the 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, thereforee, 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. This is what 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 not be used. However, what is emphasized is the manner in which the defendants adopted the trademark `DIET WHOLE FOODS'. Addition of one word with same style in which these letters are written explains the obvious, namely, dishonest adoption. With such adoption, confusion is inevitable. In Ruston Hornsby v. Zamindara Engineering PTC (Supp) (1) 175 SC, the Supreme Court deprecated the defendant's adoption of plaintiff's trademark `RUSTON' by adding word `INDIA' to its mark and held 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 Midland Counties Dairy Ltd. v. Midland Dairies Ltd. 1948 RPC429 it was held that:.For if the Court comes to the conclusion that the defendant was actuated in adopting the style complained of by the dishonest motive of filching some part of the plaintiffs' reputation, then the Court will not be astute to find that this nefarious design has failed.
26. In view of the aforesaid discussion, I do not accept the contention of the defendants that the ingredients of passing off action are not established 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, thereforee, 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 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 is acquired secondary signification. There is no quarrel about the proposition of law. However, my discussion above shows that the plaintiff has been able to, prima facie, show that 'Whole Food' is associated with her products in the instant case. In the facts of this case, thereforee, the judgment of Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories : [1965]1SCR737 and the case of Johnson and Johnson and Anr. v. Christine Hoden India (P) Ltd. and Anr. 1988 PTC 39 cited by the defendants would have no application.
28. The consequence of aforesaid discussion would be to confirm the ex-parte injunction granted on 9.3.2005. Resultantly, IA, 1854/2005 moved by the plaintiff is allowed and order dated 9.3.2005 is made absolute till the disposal of the suit and IA.2761/2005 preferred by the defendant is hereby dismissed. However, it will not preclude the defendant to suitably modify the trademark and also the manner in which the words are written so that they are not similar or deceptively similar or confusing.
29. CS (OS) No. 309 of 2005.
Pleadings are complete.
List before the Joint Registrar for admission/denial of documents on 26.02.2007 and before Court for framing of issues on 26.03.2007.