The Delhi High Court Takes a Knife to the Anti-Dissection Rule

M/s South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. & Anr.

Picture1In a recent trademark appeal at the Delhi High Court over two allegedly similar marks ‘HAAGEN DAZS’ and D’DAAZS the Court upheld the order of the Single Judge granting an interim injunction against use of the latter mark by the appellant-defendant. Both the appellants and the respondents were engaged in the business of the sale of ice-creams and related dairy products, although admittedly in different price brackets. The respondents-plaintiffs had initiated the suit on the basis that the mark D’DAAZS used by the appellants was deceptively similar to theirs.

 The appellants set up the argument that the application of the anti-dissection rule would imply that respondents’ mark would have to be considered as a whole and therefore no case for deceptive similarity could be made out. The respondents countered with the argument that ‘DAZS’ was the dominant part of their mark and must be accorded sufficient prominence to warrant protection.

 In its analysis, the court began by considering the scope of the power that can be exercised by the appellate court in considering matters relating to trademark injunctions and observed that the power of review was to be strictly confined to the “abuse of discretion” standard as the lower court’s ruling was in no sense a final disposition of the matter. It goes on to analyse the anti-dissection rule and states that the rule is applied in instances where composite marks are in issue and if applied correctly would imply that the mark needs to considered in its entirety, as a composite whole rather than as different and distinct elements. The court cites a number of American cases on point to buttress this point. On the other hand, the court also accords consideration to the argument advanced by the respondents that the dominant portion of the mark needs to be considered and accorded due protection. Here the court does an interesting flip-flop, it cites an extract from its own judgement in Stiefel Laborataries v. Ajanta Pharma Ltd. which holds among other things that, “However, 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.” While it chooses to emphasise on this bit, it equally ignores the following, passage also included in the extract, “The rationale of the anti-dissection rule is based upon this assumption: An average purchaser does not retain all the details of a mark, but rather the mental impression of the mark creates in its totality. 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.”

 While the court is careful in noting that the concession as observed by it is only available as a preliminary step, it ends up, in effect, using it for its final determination. I could see two possible reasons here: one, that in the opinion of the court, this preliminary stage was at the time of interim relief. The second possibility is that in the opinion of the court, this preliminary stage was also to take into account the relative effect of each part of the mark, making the comparison of the mark as a whole strongly dependent on consumer perception towards this “dominant” mark. The latter approach comes across strongly in the subsequent portions of the judgement. Notice how this pretty much renders the anti-dissection rule powerless.

 The court in its zeal to reconcile these two approaches fails to answer how they do not necessarily conflict with each other (but for a casual observation to the fact that they do not) and more importantly does not reconcile its observations with S.17 of the TM Act, 1999 or the decisions of in Emami Limited and Carlsberg (“In a given case, it may be that a registered mark is made up of several components which are distinct and in spite of separate registration in respect of such distinguishing part not having been obtained by the owner of registered mark, such proprietor is entitled to cite one distinctive part as being inseparable from the whole registered or such distinctive part and thus, can assert a right over the distinctive part. But as pointed out in Section 17 (2) (a) of the Act, such assertion has to be in conformity with the law of passing off and may not be made in aid of infringement”). It carries on with its reasoning on the assumption that it is capable of granting protection to an element of the mark as separate and distinct from the rest of the mark in case of a composite mark. While I do recognise that the dominant portion of a trademark, can be a strong indicator as to the source of the goods, it is to be considered in light of the other parts of the mark (and therefore in its entirety) and related considerations which the court here didn’t seem to do. There is a remarkable lack of Indian case law referred on the point that perhaps led the court in the direction it took.

 The court also rejected an argument from the appellants that the two products operated in different price brackets by saying that the average consumer of ice-cream is not as discerning a consumer as one that purchases luxury cars or premium alcohol and therefore is more likely to be confused.

 This action would have perhaps been better packaged as a passing off claim rather than an infringement claim in which the approach of the court would have been appropriate. This decision also seems to have killed the anti-dissection rule while affirming its existence.

 Hat tip to Mr Sumit Wadhwa.


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