In the realm of intellectual property law, trademarks serve as the lifeblood of brand identity, encapsulating a company's reputation, goodwill, and consumer trust. The case of M/S. South India Beverages Pvt. Ltd. vs. General Mills Marketing Inc. & Anr., decided by the High Court of Delhi on October 13, 2014, exemplifies the intricate dynamics of trademark protection, where the line between inspiration and infringement is often razor-thin.

This legal skirmish pitted General Mills Marketing Inc.—the purveyor of the globally renowned ice cream brand "Häagen-Dazs"—against South India Beverages Pvt. Ltd., a regional player marketing its frozen desserts under the mark "D'Daazs." At its core, the case explored the principles of trademark similarity, consumer confusion, and the delicate balance between protecting established brands and fostering market competition. The High Court's judgment not only resolved a commercial dispute but also enriched Indian trademark jurisprudence with nuanced insights into composite marks, phonetic similarity, and the irrelevance of price disparities when assessing infringement.

Detailed Factual Background
General Mills Marketing Inc., a Delaware-based corporation, is a titan in the global food industry, boasting a portfolio of over a hundred consumer brands sold across more than a hundred countries. Among its crown jewels is "Häagen-Dazs," a trademark it claims as an arbitrary, coined term devoid of any dictionary meaning, used for premium ice creams and frozen desserts. The mark has been registered in India since January 21, 1993, under Class 30 (covering ice cream, ices, sherbet, sorbet, and frozen confections), and later in 2008 under Classes 29, 30, and 42. It was introduced to the Indian market in 2007. General Mills asserted that "Häagen-Dazs" enjoyed a distinctive reputation, bolstered by its unique Danish-sounding phonetics and premium positioning.

On the other side stood M/S. South India Beverages Pvt. Ltd., an Indian company that had been producing and selling ice creams and frozen desserts under the mark "D'Daazs" since 2009, primarily in South India. The company claimed that "D'Daazs" was derived from the name of Late Dwarka Das, the father of one of its founder-directors, giving it a personal and sentimental origin. Unlike the premium-priced "Häagen-Dazs," South India Beverages positioned "D'Daazs" as an affordable option targeting a broader consumer base. The phonetic and visual similarity between "D'Daazs" and the "Dazs" component of "Häagen-Dazs" sparked the dispute, with General Mills alleging trademark infringement and seeking to protect its brand equity.

Detailed Procedural Background:

The legal battle commenced when General Mills Marketing Inc. filed a suit in the High Court of Delhi, accompanied by an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking an interim injunction to restrain South India Beverages from using the mark "D'Daazs" or any deceptively similar variant. On July 23, 2014, a Single Judge of the High Court granted the interim injunction, finding a prima facie case of infringement due to the likelihood of consumer confusion between "Häagen-Dazs" and "D'Daazs." Aggrieved by this order, South India Beverages appealed to a Division Bench comprising Justice Pradeep Nandrajog and Justice Mukta Gupta, filing FAO (OS) 389/2014. The appeal was argued extensively, with judgment reserved on September 11, 2014, and pronounced on October 13, 2014. The Division Bench upheld the Single Judge's order, dismissing the appeal but granting a 30-day grace period for South India Beverages to transition away from the infringing mark.

Issues Involved in the Case:

• Whether the mark "D'Daazs" was deceptively similar to "Häagen-Dazs," creating a likelihood of confusion among consumers?
• Whether the principle of "anti-dissection" precluded a comparison of individual elements (e.g., "Dazs" vs. "D'Daazs") in a composite mark like "Häagen-Dazs"?

Detailed Submission of Parties:

• General Mills Marketing Inc:
  • "Häagen-Dazs" is a distinctive, arbitrary mark with no linguistic meaning, entitled to robust protection.
  • "D'Daazs" is phonetically and visually similar to "Dazs," potentially confusing consumers.
  • "Dazs" is not a non-dominant element; they applied for its separate registration in 2012.
  • Price and packaging differences are irrelevant; consumers (including children) may still be confused.
• South India Beverages Pvt. Ltd.:
  • "Häagen-Dazs" should be protected as an indivisible whole (anti-dissection rule).
  • "Haagen" is the dominant element; "Dazs" is secondary.
  • "D'Daazs" originates from "Dwarka Das," denying imitation intent.
  • Their product is cheaper, with distinct packaging and caters to a different market segment.

Detailed Discussion on Judgments Cited by Parties:

• Frisch's Restaurant, Inc. v. Shoney's Inc., 1261 F.2d 759 (6th Cir. 1987) – Preliminary injunction test: success likelihood, irreparable injury, third-party harm, public interest.
• Laxmikant V. Patel v. Chetan Bhai Shah & Anr., (2002) 3 SCC 65 – Protection of goodwill despite lack of fraudulent intent.
• Fruit of the Loom, Inc. v. Girouard, 994 F.2d 1359 (9th Cir. 1993) – Anti-dissection rule supports holistic analysis of composite marks.
• Shen Mfg. Co. v. The Ritz Hotel, 393 F.3d 1238 (Fed. Cir. 2004) – Overall impression trumps dissection of components.
• Stiefel Laboratories v. Ajanta Pharma Ltd., 211 (2014) DLT 296 – McCarthy's treatise on anti-dissection affirmed.
• Re Chatam Int'l, Inc., 380 F.3d 1340 (Fed. Cir. 2004) – Dominant components still relevant in overall assessment.
• Eaton Allen Corp. v. Paco Impressions Corp., 405 F. Supp. 530 (1975) – Infringement can occur through appropriation of partial elements.
• Kirorimal Kashiram Marketing v. Shree Sita Chawal Udyog Mill, 2010 (44) PTC 293 (Del) – Arbitrary marks deserve greater protection.
• Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952 – Emphasis on phonetic similarity.
• K.R. Chinna Krishna Chettiar v. Sri. Ambal & Co., AIR 1970 SC 146 – Comparison must be visual and phonetic.
• Amar Singh Chawal Wala v. Shree Vardhman Rice, (40) PTC 417 (Del.) – Phonetic confusion similar to "Dazs" vs. "D'Daazs."
• Enercon v. OHIM, Case No. C-204/10P (CJEU, 2010) – Dominance of both "Transformers" and "Energon" supported multi-element protection.
• Universal Motor Oils Co. v. Amoco Oil Co., 809 F. Supp. 816 (1992) – Common strong elements increase confusion.
• Ireo Pvt. Ltd. v. Genesis Infratech Pvt. Ltd., 208 (2014) DLT 612 – Price differences irrelevant for widely sold consumer products.
• N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714 – Price disparity rejected as a valid defense.
• Grotrian v. Steinway & Sons, 365 F. Supp. 707 (1973) – Sophisticated consumers not immune to subliminal confusion.
• General Motors Corp. v. Lanard Toys, 468 F.3d 405 (6th Cir. 2006) – Low-cost goods attract less consumer attention, increasing confusion risk.
• Beer Nuts Inc. v. Clover Clubs Food Co., 711 F.2d 934 (10th Cir. 1983) – Consumer impression outweighs direct comparison.
• Amritdhara Pharmacy v. Satyadeo Gupta, AIR 1963 SC 449 – Confusion judged by average purchaser's memory.
• Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Labs, AIR 1965 SC 980 – Packaging does not excuse mark infringement.

Detailed Reasoning and Analysis of Judge:

The Court embarked on a meticulous analysis rooted in trademark law's dual purpose: protecting consumer clarity and rewarding brand innovation. The court began by affirming the "anti-dissection" rule, which mandates viewing composite marks like "Häagen-Dazs" as a whole, as seen in Fruit of the Loom and Shen Mfg. Co. However, it clarified, drawing from Stiefel Laboratories and Re Chatam, that this does not preclude identifying dominant elements as a preliminary step. Rejecting South India Beverages' argument that "Haagen" alone dominated, the court found no evidence to diminish "Dazs"'s significance, especially given General Mills' separate registration application for "Dazs." The phonetic similarity between "Dazs" and "D'Daazs" was a linchpin, supported by Cadila Health Care and K.R. Chinna Krishna Chettiar, which prioritize sound alongside sight. The court noted "Häagen-Dazs"'s arbitrary nature, per Kirorimal Kashiram, enhancing its protectability. Applying Justice Parker's "Rules of Comparison" from Stiefel Laboratories, the court assessed the marks through the lens of an average ice cream buyer—often impulsive and including children—finding a high likelihood of confusion.

Case Title: South India Beverages Pvt. Ltd. Vs General Mills Marketing Inc. 
Date of Order: October 13, 2014
Case No.: FAO (OS) 389/2014
Neutral Citation: 2014 SCC OnLine Del 1953
Name of Court: High Court of Delhi at New Delhi
Name of Judges: Hon'ble Mr. Justice Pradeep Nandrajog and Hon'ble Ms. Justice Mukta Gupta

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539