Trademark Infringement | Delhi HC Restrains Food Delivery Outlets From Using Dominox, Dominoz Etc. Which Are Similar To The Pizza Chain ‘Dominos’

The present suit was filed seeking, permanent injunction restraining infringement of Plaintiffs’ trademarks “Domino’s Pizza”, two signs as well as passing off, etc.

The bench of Justice Sanjeev Narula directed, “Defendants No. 1 to 8, and anybody acting on their behalf, are restrained from advertising, selling, offering for sale, and marketing any products, packaging, menu cards and advertising material, labels, stationery articles, website or any other documentation using, depicting and/or displaying the Impugned Marks “Domino”, “Domino’s”, “Dominon”, “Dominox”, “Dominoz”, “Domison”, “Domain’s” and/or any other identical or deceptively similar mark in any manner whatsoever, so as to cause confusion or deception leading to passing off of the said Defendants’ products and services as those of the Plaintiffs, and/or amounting to infringement of the Plaintiffs’ Domino’s trademarks.”

Advocate Shantanu Anand appeared for the Appellant.

Brief Facts-

The Plaintiff is Domino’s IP Holder LLC, part of the Domino’s pizza group, owns and manages certain intellectual property worldwide. Another Plaintiff Jubilant FoodWorks Limited, holds exclusive rights to operate Domino’s franchises in India, working closely with the other Plaintiff. They have used the "Domino’s" mark since 1965. It is argued that their trademark is distinctive and globally recognized due to extensive use and promotion.

They were aggrieved by defendants' use of similar trade names and marks like "Domino", "Domino’s", and others to run imitator outlets on online delivery platforms. These outlets take advantage of search suggestions. It is the case of the Petitioner that they operate offline under different names like "Pizza Express" and "Open Sky Cafe" to avoid detection. Some share the same owners or FSSAI Numbers, suggesting coordination. Several customers have complained of confusion, believing these outlets were affiliated with Plaintiffs and receiving poor-quality pizzas damaging Plaintiffs’ brand identity.

It was alleged that activities of defendants amounted to infringement of the Plaintiffs’ registered trademarks, as well as passing off their goods as those of the Plaintiffs, resulting in dilution of Plaintiffs’ trademarks and tarnishment of the Plaintiffs’ goodwill and reputation. Accordingly, the Plaintiffs have instituted this lawsuit to safeguard their statutory rights and prevent further misuse of their intellectual property.

The Court stated that the comparison of the competing marks made it evident that the defendants utilized marks that are prima facie identical or deceptively similar to the Plaintiffs’ registered Domino’s trademarks.

The Court further noted that the Impugned marks not only replicate all the distinctive elements of the Plaintiffs' registered trademarks but are also phonetically, visually, and structurally akin to them. According to the Court, these marks are presented in a manner identical to the Plaintiffs’ brand/ trademark “Domino’s” on the online platforms managed by Zomato and Swiggy.

The Court also stated that considering the fact that these impugned marks are associated with food products, which are widely marketed and consumed across diverse demographic segments, the potential for misrepresentation carries significant consumer impact. Therefore, according to the Court, it must apply a more stringent standard in evaluating the probable effects of such misrepresentation on public perception and the integrity of the Plaintiffs’ brand identity.

The Court noted that the actions of defendants constitute a clear infringement of the Plaintiffs’ statutory rights under Section 29 of the Act. Consequently, the Plaintiffs are justifiably entitled to seek an injunction to restrain these Defendants from continuing such infringing activities.

Accordingly, the court granted injunction to prevent ongoing and irreparable injury.