13 March 2018Trademarks

Whole Foods loses UK trademark opposition

Grocery chain Whole Foods Market has failed in its opposition of a food-related trademark in the UK.

The UK Intellectual Property Office (IPO) found that there was no risk of confusion between a Whole Foods trademark and an applied-for mark in a decision issued on March 5.

In March 2016, Muhammad Awais and Ishtiaq Ahmad applied to register a trademark consisting of a green circle layered on top of a black square. Inside of the circle are the words “Whole Food Earth” in white. The application falls under class 35: retail services in relation to foodstuffs.

Whole Foods opposed the applied-for mark, citing EU trademark 4,974,994, which consists of the words “Whole Foods Market” and covers class 35.

The grocery chain claimed that the trademarks are highly similar and the services are identical or similar, which would result in a likelihood of confusion. Whole Foods also argued that it has acquired a reputation in the UK and the applied-for trademark is “free-riding on the coattails” of the grocery chain’s trademark.

The applicants filed a counterstatement, denying the grounds of opposition and requesting that Whole Foods prove genuine use of its trademark. Whole Foods Market complied with the request and provided evidence.

In its submissions, Whole Foods said that its house brand ‘Whole Foods Market’ has played an intrinsic part of its branding since the 1980s, when it opened its first store. Roberta Lang, president of Whole Foods, added that the branding “features very prominently in everything we do in the UK”, including in marketing materials and on packaging.

However, Al Skilton, on behalf of the UKIPO, said that she did not find evidence that supported Whole Foods claim that there is goodwill in the words “Whole Foods” when used out of context from the trademark.

She added that there was no evidence of the opponent “attempting to create a market for its services using simply the plain words ‘Whole Foods’”.

Skilton concluded that the words “Whole Foods” in the grocery sign are entirely descriptive of the type of goods being sold and that the difference between ‘Whole Foods Market’, either in stylised or plain word form, and the applicant’s trademark is sufficient to avoid misrepresentation through deception.

She also found that the visual and conceptual differences between the trademarks are sufficient to avoid direct confusion.

The applicants’ mark was allowed to proceed to registration and Whole Foods was ordered to pay Awais and Ahmad £2100 ($2,900).

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