Haagen-Dazs prevents sale of D'daaZs ice-cream
General Mills Marketing Inc brought an action to stop the sale of D'daaZs ice cream by South India Beverages Pvt Ltd. The trademark infringement and passing-off action filed before the Delhi High Court was based on General Mills' registration and use of the HAAGEN-DAZS mark. The single judge, after hearing the matter, restrained South India Beverages from using the mark D’DAAZS.
South India Beverages appealed the order before the two-judge bench (Division Bench) of the Delhi High Court. The article discusses the contention of the parties on appeal and the reasons given by the court when ruling in favour of General Mills.
The use of the rival marks by the parties is depicted below:
General Mills' trademark South India Beverages' trademark
On Appeal, South India Beverages made the following submissions:
- It has been manufacturing ice-creams and frozen desserts under the mark D’DAAZS since 2009. The word D'daaZs is derived from the name of the late Dwarka Das, who was the father of one of the founder directors of the company.
- General Mills enjoyed protection for its mark HAAGEN DAZS as an indivisible whole, but not for the individual elements of the mark.
- 'Haagen', rather that 'Dazs', was the dominant/essential element of General Mills’ registered trademark HAAGEN DAZS. Any potential similarity with the non-dominant element 'Dazs' would not amount to infringement.
- The price and packaging of the two products were different and consumers of General Mills’ products were sophisticated consumers. This would obviate any likelihood of confusion and not amount to trademark infringement.
General Mills made the following contentions in support of its case:
- 'Haagen' and 'Dazs' are arbitrary words with no dictionary meaning.
- The trademark HAAGEN-DAZS has been used since 2007; it has been registered 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 considered as a non-dominant element of the trademark and must be accorded sufficient protection. A separate application for registration of the mark DAZS had also been filed.
The Division Bench gave the following reasons when confirming the order of single judge restraining South India Beverages from using the mark D'DAAZS:
- The mark HAAGEN-DAZS is a unique combination of arbitrary words.
- The anti-dissection rule mandates that the courts must consider composite marks in their entirety as an indivisible whole, rather than dividing them into their component parts to determine the likelihood of confusion. It is permissible to accord more or less importance to a particular portion or element of a composite mark.
- Although a trademark must be considered in its entirety, infringement is not condoned where a part of the entire trademark has been appropriated.
- There was a high degree of phonetic similarity between General Mills’ DAZS mark and South India Beverages' D'DAAZS mark.
- The court rejected South India Beverages' contention that the action for infringement would not lie since use of the word 'D'daaZs' did not result in a complete appropriation of General Mills’ HAAGEN-DAZS mark, which was to be viewed as an indivisible whole.
- No evidence had been filed by South India Beverages to support the argument that the word 'Haagen' was dominant compared to the other elements of the HAAGEN-DAZS mark. Both elements of General Mills’ mark were equally dominant.
- The products in question (ie, frozen desserts and ice-creams) are consumed by people of all ages and strata. Even sophisticated consumers are not immune from confusion in all circumstances. South India Beverages’ contention based on price difference was not a defence to infringement. Products such as ice- cream are relatively inexpensive, and even an adult consumer would not be expected to exercise a very high degree of care and caution when purchasing an ice-cream.
- Consumers only retain an imperfect impression of a mark and may be confused upon encountering a similar mark. The argument that differences in the packaging style of the rival products would not cause infringement was rejected.
Abhishek Nangia, RNA, Intellectual property Attorneys, Gurgaon
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