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TMI Blog2014 (10) TMI 1060X X X X Extracts X X X X X X X X Extracts X X X X ..... od and ice cream), in over a hundred countries across the globe. The respondent - plaintiff company claims to be manufacturing desserts such as ice-creams and frozen yogurts under the trademark 'HAAGEN DAZS' which according to it is an arbitrary word having no dictionary meaning. 'HAAGEN DAZS' has been made available in India only since the year 2007, however, the respondent - plaintiff obtained registration for the mark 'HAAGEN DAZS' in India in respect of ice cream, ices, sherbet, sorbet and frozen confections in class 30 with effect from January 21, 1993 and for food products in classes 29, 30 and 42 on January 01, 2008. 3. The appellant - defendant on the other hand, has been manufacturing ice-creams and frozen desserts under the name 'D'DAAZ' since the year 2009. It is the case of the appellant that the word 'D'DAAZ' is derived from the name of Late Dwarka Das, who was the father of one of the founder directors of the company. It is stated that the appellant - defendant has been supplying ice-creams across South India. 4. Since the present lis essentially hinges upon the conflict of trademarks propounded by the rival litigants, it would be incumbent upon us to juxtapose the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ean Motors Co., 755 F.2d 1223 (6th Cir. 1985); USACO Coal Co. v. Carbomin Energy, Inc., 689 F.2d 94 (6th Cir. 1982); Mobil Corp. v. Marathon Oil Co., 669 F.2d 366, 368 (6th Cir. 1981). The standard of appellate review of a district court order granting or denying a preliminary injunction is whether it abused its discretion. Tate v. Frey, 735 F.2d 986, 990 (6th Cir. 1984). See also, e.g., In re De Lorean Motors Co., supra; Friendship Materials Inc. v. Michigan Brick, Inc., 679 F.2d 100, 102 (6th Cir. 1982); Adams v. Federal Express Corp., 547 F.2d 319 (6th Cir. 1976). Rigid adherence to the "abuse of discretion" standard is required to avoid untoward disruption of the progression of lawsuits as the lower court decision "was in no sense a final disposition". Tate v. Frey, 735 F.2d at 990 (citing Securities and Exchange Comm'n v. Senex Corp., 534 F.2d 1240 (6th Cir. 1976); Brandeis Machinery and Supply Corp. v. Barber-Green Co., 503 F.2d 503 (6th Cir. 1974)). See, e.g., In re De Lorean Motors Co., supra." [Emphasis Supplied] 9. Before embarking on a detailed discussion of the submissions advanced at the bar, it would be apposite to take notice of the salutary purpose and sublime ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... levant in that context [Jenni Romaniuk and Byron Sharp, 'Conceptualizing and measuring brand salience', Marketing Theory Articles Volume 4(4), Pages 327-342]. 12. At this juncture it would be beneficial to refer to the observations of the United States Court of Appeals for the Sixth Circuit in its decision reported as 494 F.3d 730 Groeneveld Transport Efficiency Inc v. Lubecore International Inc. It was observed:- "Trademark law's likelihood-of-confusion requirement, in contrast, is designed to promote informational integrity in the marketplace. By ensuring that consumers are not confused about what they are buying, trademark law allows them to allocate their capital efficiently to the brands that they find most deserving. This, in turn, incentivizes manufacturers to create robust brand recognition by consistently offering good products and good services, which results in more consumer satisfaction. That is the virtuous cycle envisioned by trademark law, including its trade-dress branch. As stated in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995): In principle, trademark law, by preventing others from copying a source-ident ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ied] 13. Even the Supreme Court in its judgment reported as (2002) 3 SCC 65 Laxmikant v. Patel v. Chetan Bhai Shah & Anr, observed:- "10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ondent's mark gave, which is that of cooking or manual labour. 18. Similarly in the decision reported as 994 F.2d 1359, 1362 (9th Cir. 1993) Fruit of the Loom Inc. v. Girouard, the Court repelled the claim of infringement by applying the principle of 'anti-dissection'. The plaintiff operated under the trademark 'FRUIT OF THE LOOM', whereas the defendant operated under the trade name 'FRUIT FLOPS' and 'FRUIT CUPS'. Both parties were in the business of manufacturing and selling garments. The plaintiff brought a suit of infringement of trademark against the defendant. The Court compared the 'FRUIT OF THE LOOM' mark to 'FRUIT FLOPS' and 'FRUIT CUPS' mark and found the marks to be dissimilar. The Court observed that the purchasers view the 'FRUIT OF THE LOOM' mark as a whole rather than as dissected parts. It was further held that it is the combination of the terms in its entirety that constitute plaintiff's distinctive mark. The Identification of 'Dominant Mark' 19. Though it bears no reiteration that while a mark is to be considered in entirety, yet it is permissible to accord more or less importance or 'dominance' to a particular portion or element of a mark in cases of composite ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... his or her mind, but retains only an overall, general impression created by the composite as a whole. It is the overall impression created by the mark from the ordinary shopper's cursory observation in the marketplace that will or will not lead to a likelihood of confusion, not the impression created from a meticulous comparison as expressed in carefully weighed analysis in legal briefs. In litigation over the alleged similarity of marks, the owner will emphasize the similarities and the alleged infringer will emphasize the differences. The point is that the two marks should not be examined with a microscope to find the differences, for this is not the way the average purchaser views the marks. To the average buyer, the points of similarity are more important that minor points of difference. A court should not engage in "technical gymnastics" in an attempt to find some minor differences between conflicting marks. However, where there are both similarities and differences in the marks, there must be weighed against one another to see which predominate. The rationale of the anti-dissection rule is based upon this assumption: "An average purchaser does not retain all the detai ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t's mark 'JOSE'S GASPAR GOLD' assumed less significance in the opinion of the Court. 23. It is also settled that while a trademark is supposed to be looked at in entirety, yet the consideration of a trademark as a whole does not condone infringement where less than the entire trademark is appropriated. It is therefore not improper to identify elements or features of the marks that are more or less important for purpose of analysis in cases of composite marks. 24. In this regard we may fortify our conclusion by take note of the decision reported as 405 F.Supp. 530 (1975) Eaton Allen Corp. v. Paco Impressions Corp. The facts of the said case reveal that the plaintiff manufactured coated paper under the registered trademark 'Super-Ko- Rec-Type'. The defendant manufactured and advertised a similar product under the mark 'Super Type' and 'Super Type-7'.The defendant contended that the only similarity between the said marks was use of the words 'Super' and 'Type', terms which were neither significant parts of the plaintiff's registered trademark nor protectable as a matter of law. The court held that the consideration of a trademark as a whole does not preclude infringement where less ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ant index of whether a mark bears a deceptive or misleading similarity to another. 31. The Supreme Court in its decision reported as AIR 2001 SC 1952 Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. observed that it was not correct in law to hold that the principle of phonetic similarity has to be jettisoned when the manner in which competing words are written is different. 32. It has been held by the Supreme Court in the decision reported as AIR 1970 SC 146 K.R. Chinna Krishna Chettiar v. Sri. Ambal & Co. & Anr. that resemblance between the two marks must be considered with reference to the ear as well as the eye. 33. In Stiefel Laboratories‟s case (supra), it was pertinently observed:- "43...Rules of Comparison was explained by Justice Parker in the following words: You must take the two words. You must judge of them, both by their look & by their sound. You must consider the goods to which they are to be applied. You must consider the nature & kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trademarks is used in a normal ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... oth the elements constituting the mark of the respondent-plaintiff ['HAAGEN' and 'DAZS'] are equally dominant and are liable to be accorded sufficient protection under the legal framework. The submission is thus liable to be rejected. 36. We may highlight that even on earlier occasions judicial forums seisin of such disputes have held both the elements occurring in a composite trademark to be dominant. At this juncture, it would be apposite to refer to the judgment dated November 23, 2010 passed by the Court of Justice of the European Union (8th Chamber) in Case NoC-204/10P Enercon v. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) 37. The factual contours of the said case may be succinctly noted in order to appreciate the findings arrived at by the Court. The respondent board had denied the registration of appellant's mark 'ENERCON' on the opposition made by the proprietor of the registered trademark 'TRANSFORMERS ENERGON'. The appellant challenged the said rejection on the ground that word 'ENERGON' was not a dominant part of the registered trademark and therefore negated any likelihood of confusion. The Court rejected the plea of the appellant ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of Comparison' propounded by him. It cannot be realistically expected that children; who constitute a substantial chunk of consumers, would be in a position to distinguish between the two products by taking into account niceties such as price difference. Doubtless, in assessing cases of trademark infringement and ascertaining the likelihood of confusion, the effect of difference in price between the two products may perhaps be more profound where products such as- premium alcohol, luxury cars, exclusive perfumes etc. are involved since the prospective consumers in such cases are generally expected to be endowed with a greater sense of maturity and a keen eye against deception. 42. In the decision reported as 208 (2014) DLT 612 Ireo Pvt. Ltd. v. Genesis Infratech Pvt. Ltd. this Court repelled the defence of 'pricedifference' adduced by the defendant. The plaintiff was engaged in real estate business under the trademark 'IREO SKYON' whereas the defendant who was also dealing in the same line of business was operating under the trademark 'Genesis SKYON'. A suit was filed by the plaintiff against the defendant for infringement of trademark. It was contended on behalf of the defendant ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... as held that where a rival, operating in the same trade name as the plaintiff's, prices his goods or services at significantly cheaper rates than the plaintiff, there is likelihood of irreparable injury to the plaintiffs' reputation and goodwill. 44. It may also be observed that even the 'sophisticated consumers' are not immune from confusion under all circumstances and the said fact would not lend a complete defence to infringement. 45. In the decision reported as 365 F.Supp. 707 (1973) Grotrian, Helfferich, Schulz, Th. Steinweg Nachf, a Corporation Vs. Steinway & Sons, it was held as under: Plaintiff argues that purchaser will not be confused because of the degree of their sophistication and the price (B & L Sales Associates Vs. H. Daroff & Sons, Inc., supra, 421 F.2d at 354). It is true that deliberate buyers of expensive pianos are not as vulnerable to confusion as to products as hasty buyers of inexpensive merchandise at a newsstand or drug store [Callmann, Unfair Competition Trademarks and Monopolies, (3d ed. 1971)]. The sophistication of buyers, however, does not always assure the absence of confusion [Communications Satellite Corp. Vs. Comcet, Inc., 429 F.2d at 1252] ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 632 F.2d 817, 822 (9th Cir. 1980); American Home Products Corp. v. Johnson Chemical Co., 589 F.2d 103, 107 (2d Cir. 1978); James Burrough Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 275 (7th Cir. 1976); Fotomat Corp., 437 F. Supp. at 1244. The marks "must be compared in the light of what occurs in the marketplace, not in the courtroom." James Burrough Ltd., 540 F.2d at 275. "A prospective purchaser does not ordinarily carry a sample or specimen of the article he knows well enough to call by its trade name, he necessarily depends upon the mental picture of that which symbolizes origin and ownership of the thing desired."Avrick v. Rockmont Envelope Co., 155 F.2d 568, 573 (10th Cir. 1946). Therefore, the court must determine whether the alleged infringing mark will be confusing to the public when singly presented. Id. at 572-73; American Home Products, 589 F.2d at 107; James Burrough Ltd., 540 F.2d at 275; Union Carbide, 531 F.2d at 382. xxx [20] Also relevant to likelihood of confusion are the means by which the products are marketed. "Converging marketing channels increase the likelihood of confusion." AMF Inc., 599 F.2d at 353. The possibility of confusion is greatest when p ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... est is applied to determine if two works are substantially similar. The Court will look to the response of an 'average lay observer‟ to ascertain whether a copyright holder's original expression is identifiable in the allegedly infringing work 274 F.2d 487 (2nd Cir. 1960) Peter Pan Fabrics Inc. v. Martin Weiner Corp. Since it is employed to determine qualitative and quantitative similarity in visual copyright work, the said test can also be usefully applied in the domain of trademark law as well. 53. The Courts have reiterated that the test for substantial similarity involves viewing the product in question through the eyes of the layman. A layman is not expected to have the same 'hair-splitting' skills as an expert. A punctilious analysis is not necessary. A layman is presumed to have the cognition and experiences of a reasonable man. Therefore, if a reasonable observer is likely to get confused between the two products then a copyright violation is said to take place. 54. Transposing the said principles in the context of trademark infringement, one may venture to assess similarity and likelihood of confusion between rival marks on the touchstone of the impressio ..... X X X X Extracts X X X X X X X X Extracts X X X X
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