It is a well-settled principle in trademarks laws that marks descriptive of kind, quality or nature of goods or services are not enforceable per se. However, questions have often been raised as to what amounts of descriptive marks or whether because of long and peculiar use of a descriptive mark, the owner can claim distinctiveness thus making the mark enforceable. The Delhi High Court in Ishi Khosla v. Anil Agarwal and anr. 2007 (34) PTC 370 (Del.), dealt with the question as to whether the mark ‘Whole Foods’ was descriptive in nature and whether because of its peculiar use, the plaintiff had acquired distinctiveness.

Facts of the case

Mrs. Ishi Khosla/ Plaintiff claims to be the proprietor of ‘M/s. Whole Foods’, a proprietorship firm engaged in the production and retailing of health and healing food products in India. Mrs. Khosla also claims to be a leading Health Counsellor and a former Senior Nutritionist in a well known Heart institute and Research Centre. Learned from her past experiences as a nutritionist, Mrs. Khosla brought forth a unique concept of ‘one-stop shop’ to sell a wide range of health and healing foods to the consumers through a network of retail stores located at major cities under the name “Whole Food Shops”. Mrs. Khosla also registered a website under the same name and has authored a number of articles in leading newspapers and publications on health related issues. Mrs. Khosla, claims that she started using the trademark ‘Whole Foods’ in the year 2001 and since then the mark was extensively used by her. The trademark application for the said mark was also filed in 2004 and was pending registration. Ishi Khosla also claims copyright protection of artistic work in the get up, lay out, arrangement of features and the color scheme and appearance of packing of her goods.

The grievance of Mrs. Ishi Khosla was that Anil Agarwal & Anr./Defendants had adopted deceptively similar mark ‘DIET WHOLE FOOD’ and packing for their identical products with the mala fide intentions trade upon the hard earned reputation acquired by Mrs. Khosla’s products. Accordingly, she filed a suit for passing off and infringement of copyrights in the “artistic works”. Along with the suit an interlocutory application for ad interim injunction was also filed and in that interlocutory application the court granted an ex parte ad interim injunction against the Defendants. Aggrieved by the Order of the Court, Anil Agarwal & Anr filed an application seeking vacation of the impugned Order.

Contentions

Anil Agarwal & Anr contented that their mark “Diet Whole Food” was different from the mark ‘Whole Food’ as adopted by Mrs. Ishi Khosla. It was further contented that in order to prove passing off, the plaintiff had to establish prior use, distinctiveness and reputation of the mark. They further, contented that the mark ‘Whole Food’ was an ordinary English word and thus was descriptive of the character and quality of the goods. The expression Whole Foods is common to the trade and used by various other businesses concerns. It was further contented that the mark “Diet Whole Foods” was not identical or deceptively similar and hence no action could be brought against them.

Judgment

The court after verifying the documents on record found that, Mrs. Khosla was the prior user and had adopted the trademark in 2001 whereas the claim of Defendant over their mark was only from 2004. On the question of whether the ‘Whole Food’ was a generic word so as to deprive protection, the Court considered the dictionary meaning of the word “Whole Food” which meant “food that has not had any of its natural features taken away or any artificial substance added”. The Court observed that the adoption of trademark ‘Whole Foods’ by Mrs. Ishi Khosla was with the emphasis on health and healing food products and products like rice, pulses, oils, frosted namkeens etc which were processed