A Division Bench of the Delhi High Court recently dwelt upon the rules for determining deceptive similarity and consequent trade mark infringement when the conflicting trade marks under consideration are composite marks i.e. marks comprising of more than one element.
In the matter of South India Beverages Pvt. Ltd. v. General Mills Marketing Inc.[see end note 1], the appellant/defendant appealed against the order of the Single Judge of Delhi High Court granting an interim injunction restraining it from using its mark 'D'DAAZ' or any other mark deceptively similar to respondent/plaintiff's trade mark 'HAAGEN DAZS'. While the respondent had obtained registration for the trade mark 'HAAGEN DAZS' in India in respect of ice creams, frozen confectionary etc. in 1993, its products under the said brand name were made available in India only in 2007. On the other hand, the appellant claimed that the trade mark 'D'DAAZ' was derived from the name of its founder and has been in use in relation to ice creams and frozen desserts since 2009.
Comparison of Composite Trade Marks
The Division Bench in determining the similarity/dissimilarity between the two trade marks relied upon the "anti-dissection rule" and "identification of dominant mark rule". The appellant's contentions in establishing that its mark is not deceptively similar or likely to cause confusion in the minds of consumers in respect of the respondent's trade mark were two-fold:
a) By the application of the principle of anti-dissection, plaintiff's mark 'HAAGEN DAZS' should be compared in its entirety as an indivisible whole with the mark 'DDAAZ' rather than dissecting the marks and comparing the corresponding components.
b) Secondly, even if the constituent parts were to be considered independently, the rule of identification of the dominant part of the mark comes into play and 'HAAGEN' forming dominant part should be compared with the Defendant's mark. Therefore, 'DAZS' being the non-dominant part of the respondent's mark, similarity on its basis would not amount to infringement of trade mark.
The High Court delved into several judgments pronounced on the basis of the above rules and the rationale behind the same. In doing so, it also relied upon the following extracts from McCarthy on Trade Marks and Unfair Competition:
"..it is not a violation of the anti-dissection rule to view the component parts of conflicting composite marks as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole."
"It has been held to be a violation of the anti-dissection rule to focus upon the prominent feature of a mark and decide likely confusion solely upon that feature ignoring all other elements of the mark".
On a bare reading of the above extracts, it seems that the anti-dissection rule is antithetical to the principle of identification of dominant part. However, the Division Bench harmonized the two principles and observed that composite marks should be compared as a whole, which however does not imply that the overall impression created in the minds of the consumer may not, in certain circumstances, be dominated by one or more of its components.
The court, however, did not elaborate further on how both these principles could be applied simultaneously when comparing two composite marks. Though the Court acknowledged the harmonization of the two rules discussed above, while deciding it rejected the arguments of the appellant for lack of any evidence to support their claim that 'HAAGEN' enjoys greater prominence than 'DAZS' and therefore is the dominant part of the respondent's trade mark. It observed that both the components 'HAAGEN' and 'DAZS' are equally significant and dominant and therefore the appellant's mark is deceptively similar. Furthermore, the court held that there exists a high degree of phonetic similarity between the mark of respondent plaintiff ‘DAZS’ and mark of the appellant /defendant ‘D’DAAZS’
Price as a relevant factor in determining likelihood of confusion
The appellant also attempted at obviating the likelihood of confusion by vehemently arguing on price difference of its products as against the higher priced products of the respondents as it went on to distinguish the target consumers of the respondent to be sophisticated consumers with the capacity to afford expensive ice creams. The court however, rejected this contention as it noted that the nature of the products was such that the consumer base included people from all age groups and strata.
The court further elaborated that the argument of segregation of target consumers based on price differences would be more aptly applicable in cases involving expensive investments by the consumers such as luxury cars, electronic gadgets and appliances. It distinguished the present case and observed that in case of products such as ice creams, the consumer does not necessarily exercise a high degree of care and caution in purchasing it. In essence, despite a lower degree of similarity, the inexpensive items purchased on impulse are more likely to be confused than expensive items which are chosen carefully. Having said so, the High Court added a rider as it observed that sophisticated consumers also could not be held to be immune from confusion under all circumstances thereby lending a complete defence to infringement.
[The author is an Associate, IPR Practice, Lakshmikumaran & Sridharan, New Delhi]
- FAO (OS) 389/2014. Judgement pronounced on October 13, 2014.