Infringement Of Trademark Throgh The Judgement of Mrs. Ishi Khosla V. Anil Aggarwal And Anr
Intellectual Property law being one of the major commercial law of India has been the immense source of evolution of commercial laws in India and with the many leading judgement in our way have defined themselves, that how dynamic they are, how much adaptive and agile they can be for the enhancement of the jurisprudence of the commercials laws in India.
Therefore, we have tried to summarise a major leading judgement on the infringement of the Trademark and why the Trademark Registration is one of the major and foremost requirements of beginning your commercial journey.
Intellectual Property Rights (IPR) refers to rights created to protect intangible creations of the human intellect such as any product, artistic work, symbols, names and the like. Under this branch of law, the government gives such inventor the rights with respect to his invention and protects it from any infringement.
Now with the leading judgment in the case of MRS. ISHI KHOSLA V. ANIL AGGARWAL AND ANR.
RELEVANT PROVISIONS: –
Then major point of contention in this case relates to infringement of Trademark under the Trademark Act.
Hereinafter Mrs. Isha Khosla shall be referred to as “Plaintiff” amd Anil Aggarwal shall be referred to as “Defendant”.
BACKGROUND: –
The plaintiff Mrs. Ishi Khosla founded `M/s. Whole Foods’, which is a sole proprietorship firm of the plaintiff. She 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 Centre, New Delhi. She brought forth a unique concept ‘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. 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 and 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.
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, therefore, 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. The Plaintiff also argued that it was using the said trademark from the year 2001.
The Defendant argued that it had obtained Registration of the Trademark ‘DIET WHOLE FOODS’ which is different from ‘Whole Foods’. The addition of word ‘DIET’ makes the trademark of the defendant very different descriptively and phonetically from that of the plaintiff.
FACTS OF THE CASE: –
- The defendant claimed that the Trademark of the plaintiff 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.
- It was also argued that the mark of Defendant ‘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.
HIGH COURT JUDGEMENT: –
It was held by the Court 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.”
It was also held that 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.
CONCLUSION: –
This case law settles the principle of “acquired distinctiveness”. The goods associated with a trademark do not have to be in the market for a certain number of years for the trademark to have acquired distinctiveness. A trademark can acquire distinctiveness; even overnight, and therefore, it depends from case to case. There is no fixed time frame for a trademark to have acquired distinctiveness.
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