South India Beverages Pvt. Ltd. Vs. General Mills Marketing Inc.
Before the High Court of Delhi at New Delhi
FAO(OS) No. 389/2014
Decided On: 13.10.2014
Respondent was the proprietor of the mark ‘HAAGEN – DAZS’ for ice cream claiming use since 2007 in India. Appellant was using mark ‘D’DAAZS’. The use of both the parties is depicted below:
Respondent filed a suit for infringement of it’s trade mark against the Appellant. Learned Single Judge of the Delhi High Court granted an injunction in favour of the Respondent, restraining the Appellant from using the mark ‘D’ Daazs’. Against the order of the Learned Single Judge, the Appellant filed the present appeal.
Contentions of the Appellant:
• Respondent enjoys protection for its mark ‘HAAGEN DAZS’ as an indivisible whole and not for the individual elements constituting the same.
• ‘HAAGEN’ alone forms the dominant/essential part of the Respondent’s registered trademark ‘HAAGEN DAZS’ and not ‘DAZS’.
• Price of the two products is different and the consumer of Respondent’s products are sophisticated consumers.
Contentions of the Respondent:
• ‘DAZS’ cannot be construed as a non-dominant element of it’s trademark and must be accorded protection.
• Application for registration for the mark ‘DAZS’ separately has also been filed.
Observations of the Court:
Mark ‘HAAGEN DAZS’ is a ‘Composite Mark’, made up of more than one element.
Analysis of composite marks in the cases of trademark infringement pose peculiar problems and has led the Courts to develop the rules of ‘anti-dissection’ and identification of ‘dominant mark’.
The Rule of Anti-Dissection
This rule mandates that the Courts while dealing with cases of trademark infringement involving composite marks, must consider the composite marks in their entirety as an indivisible whole rather than truncating or dissecting them into its component parts and make comparison with the corresponding parts of a rival mark to determine the likelihood of confusion.
The Identification of ‘Dominant Mark’
While a mark is to be considered in entirety, yet it is permissible to accord more or less importance or ‘dominance’ to a particular portion or element of a mark in cases of composite marks. Thus, a particular element of a composite mark which enjoys greater prominence vis-à-vis other constituent elements, may be termed as a ‘dominant mark’.
As per McCarthy on Trademarks and Unfair Competition, the principle of ‘anti dissection’ does not impose an absolute embargo upon the consideration of the constituent elements of a composite mark. The said elements may be viewed as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole. Thus, the principle of ‘anti- dissection’ and identification of ‘dominant mark’ are not antithetical to one another and if viewed in a holistic perspective, the said principles rather compliment each other.
While a trademark is supposed to be looked at in entirety, yet the consideration of a trademark as a whole does not condone infringement where less than the entire trademark is appropriated. It is therefore not improper to identify elements or features of the marks that are more or less important for purpose of analysis in cases of composite marks.
Therefore, the submission of the Appellant that action for infringement would not lie since use of the word ‘D’DAAZS’ does not result in complete appropriation of the Respondent’s mark ‘HAAGEN DAZS’, which is to be viewed as a whole, is liable to be rejected.
Dominant features are significant because they attract attention and consumers are more likely to remember and rely on them for purposes of identification of the product. Usually, the dominant portion of a mark is that which has the greater strength or carries more weight. Descriptive or generic components, having little or no source identifying significance, are generally less significant in the analysis. However, words that are arbitrary and distinct possess greater strength and are thus accorded greater protection.
‘HAAGEN’ alone forms the dominant/essential part
There is nothing on record to support the conclusion that the word ‘HAAGEN’ has enjoyed greater prominence vis-à-vis the other elements of the mark and can thus be treated as the dominant element of the Respondent’s registered trademark. Prima facie, it appears that both the elements constituting the mark of the Respondent are equally dominant and are liable to be accorded sufficient protection under the legal framework.
Price Difference/Sophisticated Consumer
Ice-creams is consumed by people of all age group and strata. Experience suggests that ice-cream is cherished by people belonging to all age-group, especially children. Doubtless, in assessing cases of trademark infringement and ascertaining the likelihood of confusion, the effect of difference in price between the two products may perhaps be more profound where products such as- premium alcohol, luxury cars, exclusive perfumes etc. are involved since the prospective consumers in such cases are generally expected to be endowed with a greater sense of maturity and a keen eye against deception.
Even the ‘sophisticated consumers’ are not immune from confusion under all circumstances and the said fact would not lend a complete defence to infringement.
The appeal was dismissed.