General Mills Marketing Inc (GMM) recently brought an action to stop sale of D’DAAZS Ice cream by South India Beverages Pvt. Ltd. (SIBPL). The trademark infringement and passing off action filed at the Delhi High Court by GMM was based on its registration and use of HAAGEN-DAZS mark. The single judge after hearing the matter restrained SIBPL from using the mark D’DAAZS.
SIBPL appealed the order before the two judge bench (Division Bench) of the Delhi High court. The case note discusses the contention of the parties in Appeal and the reasons given by the Court while ruling in favour of GMM. The use of the rival marks by both the parties is depicted below:
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SIBPL in its Appeal made the following submissions:
- It has been manufacturing ice-creams and frozen desserts under the mark HAAGEN-DAZS since 2009. The word D’DAAZS is derived from the name of Late Dwarka Das, who was the father of one of the founder directors of the company.
- GMM enjoys protection for its mark HAAGEN DAZS as an indivisible whole and not for the individual elements.
- HAAGEN alone forms dominant/essential part of the GMM’S registered trademark HAAGEN DAZS and not 'DAZS'. Any potential similarity with the non-dominant element DAZS would not amount to infringement
- Price and packaging of the two products is different and the consumers of GMM’s products are sophisticated consumers. This would obviate likelihood of confusion and not amount to trade mark infringement
GMM made following contentions in support of their case:
- HAAGEN DAZS are arbitrary words having no dictionary meaning.
- The trade mark HAAGEN-DAZS has been used since 2007 and stands registered in in class 30 for ice cream since January 21, 1993 and for food products in classes 29, 30 and 42 since January 1, 2008.
- DAZS cannot be construed as a non-dominant element of it’s trademark and must be accorded sufficient protection. Application for registration for the mark DAZS separately has also been filed.
The Division Bench gave following reasons when deciding the appeal and confirming the order of single judge restraining SIBPL from using the mark 'D'DAAZS':-
- The mark HAAGEN-DAZS is a unique combination of arbitrary words.
- This anti dissection rule mandates that the Courts must consider the composite marks in their entirety as an indivisible whole rather than dissecting them into its component parts to determine the likelihood of confusion. 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
- Although a trademark is to be considered in entirety, however infringement is not condoned where less than the entire trademark is appropriated.
- There exists a high degree of phonetic similarity between the GMM’s mark 'DAZS' and mark of SIBPL 'D'DAAZS'.
- The SIBPL’s contention that the action for infringement would not lie since use of the word D’DAAZS does not result in complete appropriation of the GMM’s mark HAAGEN-DAZS, which is to be viewed as an indivisible whole is rejected.
- No evidence has been filed by SIBPL to support that the word HAAGEN enjoyed greater prominence vis-à-vis the other elements of the mark. Both the elements constituting the GMM’s mark are equally dominant
- The products in question i.e. frozen desserts/ice-creams are consumed by people of all age group and strata. Even the 'sophisticated consumers' are not immune from confusion under all circumstances. The SIBPL’s contention based on price difference is not a defence to infringement. The products such as the ice- cream are relatively not expensive. Even an adult consumer is not expected to exercise a very high degree of care and caution while exercising his choice in purchasing an ice cream.
- Consumers only retain a hazy impression of a mark and so may be confused upon encountering a similar mark. The difference in the packaging style of rival products would not cause infringement is rejected.