## Facts

- Häagen-Dazs, Inc. sold premium ice cream and marketed it using a Scandinavian-themed brand identity.
- Frusen Gladje Ltd. and related producers/distributors entered the premium ice cream market using packaging and marketing that also suggested a Scandinavian theme.
- Häagen-Dazs sued under Lanham Act § 43(a) and New York unfair-competition law, alleging (1) trade-dress imitation likely to cause confusion and “passing off,” and (2) false suggestion of geographic origin (Swedish/Scandinavian).
- Häagen-Dazs identified five allegedly copied package features: ingredient phraseology; a statement of artificial ingredients not present; serving instructions; a two-word Germanic-sounding name with an umlaut; and a map of Scandinavia.
- Häagen-Dazs asserted Frusen Gladje’s packaging implied Swedish origin (Swedish text and “From Old Sweden”) though the product was made in the United States and not sold in Sweden.
- Defendants responded that Häagen-Dazs itself used a fabricated Scandinavian identity and imagery despite lacking genuine Scandinavian origin.
- Häagen-Dazs moved for a preliminary injunction to stop defendants’ packaging and theme pending final adjudication.

## Issues

1. Whether Häagen-Dazs showed entitlement to a preliminary injunction under § 43(a) and New York unfair-competition law based on likely confusion from defendants’ Scandinavian-themed trade dress.
2. Whether Häagen-Dazs’s own misleading Scandinavian/foreign branding barred or materially weakened its request for equitable relief under the doctrine of unclean hands.
3. Whether the alleged geographic-origin implications in defendants’ packaging justified preliminary injunctive relief when plaintiff employed similar foreign-association marketing.

## Decision

- The court denied the motion for a preliminary injunction.
- The court found Häagen-Dazs did not make the clear showing required for extraordinary preliminary relief.
- The court concluded that Häagen-Dazs’s own conduct in marketing a domestic product with a fabricated Scandinavian identity supported unclean hands and undercut equitable relief.
- The court viewed the claimed “Scandinavian marketing theme” elements as largely descriptive or commonplace and not clearly proprietary.
- The court found no sufficiently compelling showing of likely confusion or equities warranting an order effectively forcing early package redesign or market disruption.

## Legal Principles

- A preliminary injunction requires a strong showing of likely success on the merits and irreparable harm, or serious questions on the merits plus a balance of hardships sharply favoring the movant.
- Trade dress may be protected under § 43(a), but protection is not readily available for broadly defined marketing concepts composed of common descriptive promotional elements without a strong showing of distinctiveness/secondary meaning and likely confusion.
- Unclean hands may bar or substantially limit equitable relief in Lanham Act and unfair-competition cases when the plaintiff’s own marketing conduct is materially similar to the allegedly wrongful conduct.
- Claims of false suggestion of geographic origin are assessed in equity; a plaintiff that itself trades on misleading foreign associations may be disfavored when seeking to enjoin a competitor’s similar strategy.

## Conclusion

The court refused to preliminarily enjoin defendants’ Scandinavian-themed packaging because the asserted trade-dress “theme” was not shown to be uniquely protectable or clearly confusing at the preliminary stage, and plaintiff’s comparable misleading foreign-branding practices supported unclean hands and weighed strongly against equitable relief.


Haagen-Dazs, Inc. v. Frusen Gladje Ltd., 493 F. Supp. 73 (S.D.N.Y. 1980)