South India Beverages Pvt. Ltd. Vs General Mills Marketing Inc.

Price differences and consumer sophistication do not necessarily negate confusion

Introduction

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 dance 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, this case delves into 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 India’s trademark jurisprudence with nuanced insights into composite marks, phonetic similarity, and the irrelevance of price disparities in 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, 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, had been 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, lending 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

The case revolved around several pivotal issues in trademark law: 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 argued that “Häagen-Dazs” was a distinctive, arbitrary mark with no linguistic meaning, entitled to robust protection. They contended that “D’Daazs” was phonetically and visually similar to “Dazs,” a significant component of their mark, and that such similarity could confuse consumers, diluting their brand equity. General Mills emphasized that “Dazs” was not a non-dominant element, citing their separate application for its registration on October 22, 2012, as evidence of its independent significance. They dismissed South India Beverages’ defenses of price disparity and distinct packaging, asserting that ice cream, as a widely consumed product, attracted buyers of varying discernment, including children, who were unlikely to notice such differences.

South India Beverages Pvt. Ltd. countered that “Häagen-Dazs” should be protected as an indivisible whole under the “anti-dissection” rule, not dissected into “Haagen” and “Dazs” for comparison. They argued that “Haagen” was the dominant element, rendering “Dazs” secondary and insufficient to sustain an infringement claim. The company highlighted the personal origin of “D’Daazs” from “Dwarka Das,” denying any intent to mimic “Häagen-Dazs.” They further contended that their lower-priced product catered to a different market segment, and that sophisticated consumers of “Häagen-Dazs” would not confuse it with “D’Daazs,” especially given distinct packaging styles.

Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context Referred in This Case

The court’s analysis drew heavily on a rich tapestry of Indian and international precedents, each cited to illuminate specific facets of trademark law:

1. Frisch’s Restaurant, Inc. v. Shoney’s Inc., 1261 F.2d 759 (6th Cir. 1987) - Cited by the court to outline the four-pronged test for granting a preliminary injunction: likelihood of success on merits, irreparable injury, harm to third parties, and public interest. The court used this framework to assess the Single Judge’s discretion, emphasizing the “abuse of discretion” standard for appellate review.
2. Laxmikant V. Patel v. Chetan Bhai Shah & Anr., (2002) 3 SCC 65 - General Mills relied on this Supreme Court ruling to argue that a competitor’s use of a similar name injures the goodwill of the original owner, regardless of fraudulent intent. The court agreed, underscoring the protection of consumer trust and market fairness.
3. Fruit of the Loom, Inc. v. Girouard, 994 F.2d 1359 (9th Cir. 1993) - South India Beverages invoked this case to support the “anti-dissection” rule, arguing that “Häagen-Dazs” must be viewed holistically. The court acknowledged this principle but clarified that it does not preclude identifying dominant elements as a preliminary step.
4. Shen Mfg. Co. v. The Ritz Hotel, 393 F.3d 1238 (Fed. Cir. 2004) - Cited by the court to reinforce the “anti-dissection” rule’s application, where “Putting on the Ritz” was distinguished from “Ritz” based on overall impression, supporting a holistic yet nuanced analysis of “Häagen-Dazs.”
5. Stiefel Laboratories v. Ajanta Pharma Ltd., 211 (2014) DLT 296 - General Mills referenced this Delhi High Court decision, which approved McCarthy’s treatise on the “anti-dissection” rule, to argue that “Dazs” retained significance within “Häagen-Dazs.” The court adopted this view, balancing holistic comparison with element-specific analysis.
6. Re Chatam Int’l, Inc., 380 F.3d 1340 (Fed. Cir. 2004) - The court cited this to illustrate that “Gaspar” dominated both “Gaspar’s Ale” and “Jose Gaspar Gold,” yet examined the marks wholly, supporting its finding that “Dazs” was not subordinate to “Haagen.”
7. Eaton Allen Corp. v. Paco Impressions Corp., 405 F. Supp. 530 (1975) - General Mills used this to argue that appropriating part of a mark (“Super” and “Type” from “Super-Ko-Rec-Type”) constitutes infringement. The court agreed, rejecting South India Beverages’ claim that “D’Daazs” did not fully mimic “Häagen-Dazs.”
8. Kirorimal Kashiram Marketing and Agencies Pvt. Ltd. v. Shree Sita Chawal Udyog Mill, 2010 (44) PTC 293 (Del) - Cited by General Mills to assert that arbitrary marks like “Häagen-Dazs” deserve heightened protection, a principle the court upheld given the mark’s coined nature.
9. Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952 - General Mills relied on this Supreme Court ruling to emphasize phonetic similarity’s relevance, despite visual differences. The court found “Dazs” and “D’Daazs” phonetically akin, enhancing confusion likelihood.
10. K.R. Chinna Krishna Chettiar v. Sri. Ambal & Co. & Anr., AIR 1970 SC 146 - The court cited this to affirm that resemblance must be judged by both sight and sound, reinforcing the phonetic similarity between “Dazs” and “D’Daazs.”
11. Amar Singh Chawal Wala v. Shree Vardhman Rice & Genl. Mills, (40) PTC 417 (Del.) (DB) - General Mills invoked this to highlight phonetic confusion between “Qilla” variants, akin to “Dazs” and “D’Daazs.” The court agreed, noting the risk to ice cream buyers.
12. Enercon v. OHIM, Case No. C-204/10P (CJEU, 8th Chamber, Nov. 23, 2010) - The court referenced this European ruling, where “Transformers” and “Energon” were both dominant, to reject South India Beverages’ claim that “Haagen” alone dominated “Häagen-Dazs.”
13. Universal Motor Oils Co. v. Amoco Oil Co., 809 F. Supp. 816 (1992) - Cited by the court to note that a strong common element increases confusion likelihood, supporting the prominence of “Dazs.”
14. Ireo Pvt. Ltd. v. Genesis Infratech Pvt. Ltd., 208 (2014) DLT 612 - General Mills used this to counter the price-difference defense, which the court upheld, finding it irrelevant for ice cream consumers.
15. N.R. Dongre & Ors. v. Whirlpool Corporation & Anr., (1996) 5 SCC 714 - The court cited this Supreme Court decision to dismiss price disparity as a defense, noting potential reputation loss to “Häagen-Dazs.”
16. Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 365 F. Supp. 707 (1973) - Cited to refute South India Beverages’ claim that sophisticated buyers avoid confusion, with the court noting subliminal confusion risks.
17. General Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405 (6th Cir. 2006) - The court used this to argue that inexpensive items like ice cream warrant less consumer care, heightening confusion risk.
18. Beer Nuts Inc. v. Clover Clubs Food Co., 711 F.2d 934 (10th Cir. 1983) - Cited to emphasize marketplace perception over side-by-side comparison, supporting the court’s focus on consumer impression.
19. Amritdhara Pharmacy v. Satyadeo Gupta, AIR 1963 SC 449 - The court relied on this Supreme Court precedent to assess confusion from the perspective of an unwary purchaser with imperfect recollection.
20. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 - General Mills cited this to argue that packaging differences do not negate infringement of essential features, a view the court endorsed.

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 confusion risk, as echoed in Amar Singh Chawal Wala.

South India Beverages’ price-difference defense was dismantled with reference to Ireo Pvt. Ltd., N.R. Dongre, and Grotrian, which collectively hold that even sophisticated consumers can be misled, particularly for accessible products like ice cream. The court dismissed packaging distinctions, citing Kaviraj Pandit Durga Dutt Sharma, emphasizing that essential mark similarity trumps ancillary differences. The Beer Nuts and General Motors rulings reinforced that inexpensive, impulse-buy items heighten confusion likelihood due to lower consumer scrutiny.

The court’s appellate restraint, guided by Frisch’s Restaurant, upheld the Single Judge’s discretion, finding a strong likelihood of success, irreparable harm to General Mills’ goodwill, and public interest in preventing confusion. Balancing equities, it granted a 30-day transition period, reflecting pragmatic justice.

Final Decision

The Division Bench dismissed South India Beverages’ appeal, affirming the interim injunction against using “D’Daazs” or any similar mark. The injunction’s operation was deferred for 30 days from October 13, 2014, allowing the appellant to exhaust existing packaging and adapt. No costs were awarded.

Law Settled in This Case

This judgment crystallized several principles in Indian trademark law:Composite marks must be assessed holistically, but dominant elements can be identified without violating the “anti-dissection” rule.Phonetic similarity is a critical factor in determining deceptive similarity, especially for arbitrary marks.Price differences and consumer sophistication do not necessarily negate confusion, particularly for widely consumed, inexpensive goods.

• 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], High Court of Delhi