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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 ..... ry observer test 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 - 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. 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 - 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 impression gathered by a reasonable observer, who is a layman as opposed to a co ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... for the purpose of assessing whether prima-facie there exists a reasonable possibility of confusion to arise in the minds of the consumers. 5. It is the case of the appellant - defendant that the respondent - plaintiff enjoys protection for its mark HAAGEN DAZS as an indivisible whole and not for the individual elements constituting the same. Reliance has been placed on the principle of anti-dissection consistently applied by the Courts since time immemorial while dealing with cases of trademark infringement. It has been further submitted that even if the constituting elements of the mark are considered, HAAGEN forms the dominant part of the respondent-plaintiff s trademark and any potential similarity with the non-dominant element DAZS in a trademark would not amount to infringement. 6. Per contra, the respondent - plaintiff has contended that DAZS cannot be construed as a non-dominant element of their trademark and must be accorded sufficient prominence to warrant protection. In this regard it has been highlighted that the application for registration for the mark DAZS separately has also been filed on October 22, 2012. 7. Since we are exercising an app ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... se and sublime philosophy which underscores the laws affording protection of trademarks. 10. A successful brand name is created by generating a high level of brand awareness and forming distinctive brand images. Brand image refers to the role of brand names and other aspects of a brand s trade dress as cues that retrieve or signal product attributes, benefits, affect or overall quality. In this sense, the brand itself is not a memory target but a cue that might facilitate recall or inference of previously learned brand associations. A paramount factor influencing a consumer s choice of brand is his memory of previous exposures of the brand. Distinctive brand names and packaging are highly conducive to mental associations and serve as pathways to facilitate a much more accurate recall by a consumer. It enables finer retrieval of the experience. Studies reveal that extrinsic brand cues might actually enhance the memorability of prior experiences with specific brands, thereby facilitating accurate quality discrimination and improving consumer welfare. Thus, the development of such brand value in the form of a mark containing names, patterns, etc. which would often be a direct refle ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... copying a source-identifying mark, reduces the customer's costs of shopping and making purchasing decisions, for it quickly and easily assures a potential customer that this item - the item with this mark - is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation related rewards associated with a desirable product. The law thereby encourages the production of quality products, and simultaneously discourages those who hope to sell inferior products by capitalizing on a consumer's inability quickly to evaluate the quality of an item offered for sale. It is the source distinguishing ability of a mark . . . that permits it to serve these basic purposes. Id. at 163-64, 115 S.Ct. 1300 (internal citations, quotation marks, and brackets omitted) (emphasis in original). Such an incentive structure would of course be disrupted if a manufacturer's hard-won brand recognition were open to appropriation by other manufacturers who confused consumers into believing that the two brands are affiliated or ar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury. [Emphasis Supplied] 14. Adverting ourselves to the case under consideration, we find that the mark of the respondent - plaintiff HAAGEN DAZS is what may be termed as a Composite Mark i.e. made up of more than one element. 15. Analysis of composite marks in the cases of trademark infringement pose peculiar problems and has led the Courts to develop the rules of anti-dissection and identification of dominant mark . The Rule of Anti-Dissection 16. This rule mandates that the Courts whilst dealing with cases of trademark infringement involving composite marks, must consider the composite marks in their entirety as an indivisible whole rather than truncating or dissecting them into its component parts and make comparison with the corresponding parts of arrival mark to determine the likelihood of confusion. The raison d' tre underscoring the said principle is that the commercial impression of a composite trademark on an ordinary prospective buyer is created by the mark as a whole and not by its component parts [994 F.2d 1359, 1362 (9th Cir. 1993 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rtion or element of a mark in cases of composite marks. Thus, a particular element of a composite mark which enjoys greater prominence vis- -vis other constituent elements, may be termed as a dominant mark . 20. At this juncture it would be apposite to refer to a recent decision of this Court reported as 211(2014) DLT 296 Stiefel Laborataries v. Ajanta Pharma Ltd. The Court whilst expounding upon the principle of antidissection cited with approval the views of the eminent author on the subject comprised in his authoritative treatise -McCarthy on Trademarks and Unfair Competition. It was observed: 41. The anti-dissection rule which is under these circumstances required to be applied in India is really based upon nature of customer. It has been rightly set out in McCarthy on Trademarks and Unfair Competition about the said rule particularly in Para 23.15 which is reproduced hereunder: 23.15 Comparing Marks: Differences v. Similarities [1] The Anti-Dissection Rule [a] Compare composites as a Whole: Conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks up into their component parts for comparison. This is the a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rage 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. Similarly, it is improper to find that one portion of a composite mark has no trademark significance, leading to a direct comparison between only that which remains. [Emphasis Supplied] 21. The view of the author makes it scintillatingly clear, beyond pale of doubt, that the principle of anti dissection does not impose an absolute embargo upon the consideration of the constituent elements of a composite mark. The said elements may be viewed as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole. Thus, the principle of antidissection and identification of dominant mark are not antithetical to one another and if viewed in a holistic perspective, the said principles rather compliment each other. 22. We may refer to the decision of the United States Court of Appeals ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... as a whole does not preclude infringement where less than the entire trademark is appropriated. 25. Therefore, the submission of the appellant-defendant predicated upon the principle of anti-dissection that action for infringement would not lie since use of the word D DAAZS does not result in complete appropriation of the respondent-plaintiff s mark HAAGEN DAZS , which is to be viewed as an indivisible whole, is liable to be rejected. 26. Dominant features are significant because they attract attention and consumers are more likely to remember and rely on them for purposes of identification of the product. Usually, the dominant portion of a mark is that which has the greater strength or carries more weight. Descriptive or generic components, having little or no source identifying significance, are generally less significant in the analysis. However, words that are arbitrary and distinct possess greater strength and are thus accorded greater protection.[174 F. Supp. 2d 718, 725 (M.D. Tenn. 2001) Autozone, Inc. v. Tandy Corporation] 27. It would be pertinent to recollect that in the present case, the mark of the respondent-plaintiff- HAAGEN DAZS , is a unique combinati ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... at is likely to happen if each of those trademarks is used in a normal way as a trademark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be confusion-that is to say, not necessarily that one man will be injured the other will gain illicit benefit, but that there will be confusion in the mind of the public which will lead to confusion in the goods-then you may refuse the registration, or rather you must refuse the registration in that case. [Emphasis Supplied] 34. A Division Bench of this Court in the decision reported as (40) PTC 417 (Del.) (DB) Amar Singh Chawal Wala v. Shree Vardhman Rice Genl. Mills recognised the relevance of phonetic similarity between the constituent elements comprised in the competing marks. The plaintiff was engaged in selling rice under the registered trademarks 'Golden Qilla' and 'Lal Qilla'. The defendant, who was also selling the same product, was operating under the trademark 'Hara Qilla', against which the plaintiff sought injunction. The Court held that the essential feature of the mark is the word 'QILLA', whether it is s ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y likelihood of confusion. The Court rejected the plea of the appellant and observed that both the elements of the opposer s registered trademark i.e. transformers and energon were equally distinctive and dominant. The Court added that assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark; on the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. 38. Significantly, in the decision reported as 809 F. Supp. 816 Universal Motor Oils Co. v. Amoco Oil Co., it has been held that where the common portion in both the concerned marks is relatively strong or dominant, there is a higher probability of likelihood of confusion. 39. It is also a settled proposition of law that where products are virtually identical, as they are in the present case, the degree of similarity in the marks necessary to support a finding of infringement is less than in the case of dissi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... efendant for infringement of trademark. It was contended on behalf of the defendant that the cost of the property being sold by the plaintiff is much higher than the cost of property being dealt by him and thus there exists no likelihood of confusion. The Court rejected the said contention and held that the defendant had slavishly copied the mark of the plaintiff and cannot be permitted to continue to use a deceptively similar trademark. In order to fortify its conclusion the Court cited with approval the decision reported as 2011 (45) PTC 329 (Del) Aman Resorts Limited v. Mr. Deepak Narula Anr. In the said case the plaintiff was engaged in operating hotels, resorts and luxury villas under the trade name AMAN and had brought a suit for permanent injunction restraining the defendant from using the mark AMAN in respect of the services offered by him. The defendants argued that the goods and services provided by them were offered at significantly cheaper rates, so there would be no probability of deception of the public. The Court did not accept the said contention and significantly observed:- Where a rival or junior mark prices his goods or services at significantly cheaper ra ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the absence of confusion [Communications Satellite Corp. Vs. Comcet, Inc., 429 F.2d at 1252]. It is the subliminal confusion apparent in the record as to the relationship, past and present, between the corporate entities and the products that can transcend the competence of even the most sophisticated consumer. Misled into an initial interest, a potential Steinway buyer may satisfy himself that the less expensive Grotrian - Steinweg is at least as good, if not better, than a Steinway. Deception and confusion thus work to appropriate defendant's good will. This confusion, or mistaken beliefs as to the companies' interrelationships, can destroy the value of the trademark which is intended to point to only one company [American Drill Busing Co. v. Rockwell Mfg. Co., 342 F.2d 1922, 52 CCPA 1173 (1965)]. Thus, the mere fact that purchasers may be sophisticated or discriminating is not sufficient to preclude the likelihood of confusion. Being skilled in their own art does not necessarily preclude their mistaking one trademark for another when the marks are as similar as those here in issue, and cover merchandise in the same general field [Id]. [Emphasis Supplied] 46. The sa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... likelihood of confusion. AMF Inc., 599 F.2d at 353. The possibility of confusion is greatest when products reach the public by the same retail outlets. See generally Exxon Corp. v. Texas Motor Exchange, 628 F.2d 500, 505-06 (5th Cir. 1980); Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1229 (3d Cir. 1978). Confusing similarity is most likely when the products themselves are very similar. Exxon Corp., 628 F.2d at 505; see Fotomat Corp., 437 F. Supp. at 1243-44. [21] Finally, the court must examine the degree of care with which the public will choose the products in the marketplace. `The general impression of the ordinary purchaser, buying under the normally prevalent conditions of the market and giving the attention such purchasers usually give in buying that class of goods, is the touchstone.' McGregor-Doniger, 599 F.2d at 1137 (quoting 3 R. Callman, The Law of Unfair Competition, Trademarks and Monopolies 81.2, at 577 (3d ed. 1969) (footnote omitted)); see Squirtco, 628 F.2d at 1091. Buyers typically exercise little care in the selection of inexpensive items that may be purchased on impulse. Despite a lower degree of similarity, these items are mor ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... to assess similarity and likelihood of confusion between rival marks on the touchstone of the impression gathered by a reasonable observer, who is a layman as opposed to a connoisseur. 55. The contention raised by the appellant - defendant that in view of the marked difference in the style of packaging, a prima facie case of infringement is not made out cannot be countenanced in light of the clear judicial pronouncements rendered by the Supreme Court. 56. The Supreme Court in the decision reported as AIR 1965 SC 980 Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, pertinently observed:- The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the make would ..... X X X X Extracts X X X X X X X X Extracts X X X X
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