Introduction
In a landmark ruling, the Delhi High Court has interpreted the interface between the “anti-dissection rule” and the doctrine of “dominant elements” of trademark law. While courts are normally required to consider marks as a whole, they may consider giving greater emphasis to the dominant element of a composite mark.The decision confirms that the identification of a misleadingly similar dominant element could be sufficient to determine infringement even if the whole mark is not replicated.
Background
The controversy was between General Mills Marketing Inc., the registered owner of the international ice cream company “HAAGEN DAZS,” and M/S South India Beverages Pvt. Ltd., who had begun selling frozen desserts under the mark “D’DAAZ.” The plaintiff alleged that “D’DAAZ” was misleadingly similar to their mark, but the defendant contended that “HAAGEN DAZS” was a composite mark to be examined as a whole, where “DAZS” was a non-dominant component. An injunction had been granted in favour of the plaintiff by the Single Judge. In appeal, the Division Bench debated whether employing a deceptively similar element—here, “DAZS”—could constitute infringement on its own.
Key Points
- Anti-Dissection and Dominance Are Not Mutually Exclusive: The Court ruled that the anti-dissection principle does not preclude courts from determining which element of a composite mark is dominant. Although a mark must be considered in its entirety, elements that dominate consumers’ minds may be assigned greater significance.
- Composite Marks Can Have More Than One Dominant Element: Refusing the defendant’s argument that just “HAAGEN” was dominant, the Court pointed out that “HAAGEN DAZS” was a coined, arbitrary term with no meaning in the dictionary, and both elements could be said to be dominant.
- Phonetic and Visual Similarity Applies: The Court ruled that there was substantial phonetic similarity between “DAZS” and “D’DAAZ” since consumers will recall and repeat strongest sounds.It confirmed the Supreme Court’s view that resemblance would need to be subject to both ear and eye.
- Similarity Is Not Required To Be Exact: Even when the entire mark is not copied, taking a controlling element can be enough. The Court referred to earlier decisions holding that copying a component of a mark can constitute infringement where the component possesses distinctive significance.
- Sophisticated Consumers Not Above Confusion: The argument of the defendant that its products were lower in price and were directed towards a different market proved unsuccessful. The Court noted that sophisticated consumers can also be confused, and ice cream is being eaten across social levels, especially among children.
Recent Development
This 2014 ruling remains a benchmark in trademark law, especially for the doctrine that dominant elements in composite marks have independent standing. The Court specifically ruled that “DAZS” possessed sufficient independent distinctiveness to confuse consumers when copied as “D’DAAZ.” Also, packaging variations and price variances were deemed irrelevant in light of the misleading phonetic similarity. The Court held as follows:
“Dominant features are important since they draw attention and consumers are more likely to recall and depend on them for identification purposes… the commercial impression of a composite trademark by an average prospective buyer is formed by the mark as a whole—but certain elements may have more impact.”
Conclusion
The Delhi High Court’s decision confirms that in trademark litigations, courts are not excluded from recognizing dominant features under composite marks. Even as it applied the rule against dissection, the US law permits a subtle approach—enabling courts to consider what aspects of a mark generate consumer association. The decision strengthens protection of brand identity against even a partial imitation and promotes a consumer-oriented understanding of trademark confusion. It continues to be a persuasive authority for assessing deceptive similarity in India’s changing trademark environment. US v. The American Automobile Association.
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WRITTEN BY ADI MEHTA
