Dominos V. Dominick| Where Marks In Question Pertain To Food Items, Higher Degree Of Care & Caution Is Needed: Delhi HC In Trademark Case

The Delhi High Court in a trademark infringement case between Dominos and Dominick has observed that where marks in question pertain to food items, a higher degree of care and caution is needed.

The plaintiff i.e., Dominos IP Holder LLC had filed a suit against the defendant i.e., Dominick Pizza for infringement of its trademark “Domino’s” before the Court.

A Single Bench of Justice C. Hari Shankar held, “The Court is inclined to note, here, that where the marks in question pertain to food items, or eateries where food items are dispensed and served, a somewhat higher degree of care and caution is expected to be observed. Running an eating house using a mark which is deceptively similar to a reputed mark does not speak well for the enterprise concerned. The intent to capitalise on the reputation of a known and established brand, by using a mark which is deceptively similar to the mark used by the brand, can, in a given case, give rise to a legitimate apprehension of quality compromise by the imitator.”

The Bench said that the courts have to be vigilant in ensuring that, where the marks relate to consumable items or to enterprises such as hotels, restaurants and eating houses where consumable items are served to customers, such imitative attempts are not allowed to go unchecked.

Advocates Pravin Anand and Shantanu Sahay appeared on behalf of the plaintiffs.

Factual Background -

The plaintiffs commenced operations in India in 1996, when the first Domino’s Pizza outlet was opened in New Delhi. As on the date when the suit was filed, the plaintiffs were operating 1,567 outlets in over 337 cities across the country and globally, the plaintiffs worked through the India centric website www.dominos.co.in. The plaint asserted that the mark “Domino’s”, with the distinctive logos, featuring faces of a domino, were unique, coined and arbitrary, and that the word “Domino’s” had no etymological significance bearing any relation to the services provided under the said mark.

By virtue of their being distinctive and arbitrary, the plaint asserted that the mark was entitled to additional intellectual property protection. The defendant provided pizza and fast food services identical to those of the plaintiffs, under the name ‘DOMINICK PIZZA’. It also replicated the plaintiffs’ registered trademarks ‘CHEESE BURST’ and ‘PASTA ITLAIANO’ for different varieties of the food items served by it. The plaintiffs claimed to have come to learn of the defendant’s activities in January 2020. The defendant applied for registration of the device mark but was unable to secure registration as the Trademark Registry objected to the application.

The High Court after considering the submissions of the counsel observed, “Viewed thus, the phonetic similarity between “Domino’s” and “Dominick’s”, in conjunction with the similarity in the logos used by the plaintiffs and Defendant 1, and the fact that they are providing identical goods and services under the respective marks, in my considered opinion, render the marks deceptively similar to each other and clearly make out a case of likelihood of confusion between the two marks. “Domino’s Pizza” and “Dominick’s Pizza” appear, to me, to be ex facie deceptively similar to each other.”

The Court said that the matter must be viewed from the perspective of a customer of average intelligence and imperfect recollection, who is not over-familiar with one or the other. It added that if such a customer visits a “Domino’s Pizza” outlet of the plaintiff on one occasion and, sometime later, visits a “Dominick’s Pizza” outlet of the defendant, likelihood of confusion is bound to exist.

“This likelihood would be exacerbated by the manner in which Defendant 1 has chosen to represent its logo, in a square format using lettering similar to that used by the plaintiffs. … If such a customer visits a “Domino’s Pizza” outlet of the plaintiff on one occasion and, sometime later, visits a “Dominick’s Pizza” outlet of Defendant 1, likelihood of confusion is bound to exist. This likelihood would be exacerbated by the manner in which Defendant 1 has chosen to represent its logo, in a square format using lettering similar to that used by the plaintiffs”, further held the Court.

The Court said that the facts of the case clearly make out a case of infringement by the defendant, of the plaintiffs’ trademarks. Hence, the Court granted a decree of permanent injunction restraining the defendant, its proprietors, partners, directors, officers, servants, agents, franchisers, and all others acting for and on its behalf from advertising, selling, offering for sale marketing etc. any product, packaging, menu cards and advertising material, labels, stationery articles, website or any other documentation using, depicting, displaying in any manner whatsoever, the marks “Dominick Pizza”, “CHEESE BURST” and “PASTA ITLAIANO” or any other mark which is identical or deceptively similar to the Plaintiffs’ registered trademarks in any manner whatsoever.

“Defendant 2 is directed to transfer, forthwith, the domain names www.dominickpizza.com and www.dominickpizzas.com to the plaintiff”, ordered the Court.

Accordingly, the High Court imposed a cost of Rs. 6,57,564.20/- on the defendant and decreed the suit.

Cause Title- Dominos IP Holder LLC & Anr. v. MS Dominick Pizza & Anr. (Neutral Citation: 2023:DHC:7126)

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