Exploring Domino’s Trademark: Can Dominick Pizza Be restrained?

by Aggarwals Associates | Oct 5, 2023 | Civil Law, Corporate Law, General

Dominick Pizza held liable for Trademark Infringement of registered trademarks of Domino’s Pizza

The Hon’ble High Cout of Delhi at New Delhi permanently injuncted Dominick Pizza from advertising or displaying in any manner the marks “Dominick Pizza”, “CHEESE BURST” and “PASTA ITALIANO” or any other mark which is identical or deceptively similar to the Domino’s.

WHAT WERE THE FACTS OF THE CASE?

CS (COMM) 587 of 2022 was instituted by Dominos IP Holder LLC & Anr. (hereinafter referred to as “DOMINOS”), against MS Dominick Pizza & Anr. (hereinafter referred to as “DOMINICK”), seeking a permanent injunction against Dominick using the mark “Dominick Pizza”, “CHEESE BURST” and “PASTA ITALIANO” or any other mark identical or deceptively similar to Dominos Trademark and to also withdraw the trademark application number 3285916, dated 15.06.2016 filed by Dominick for registration of the impugned mark. Dominos also sought locking, blocking, suspension, and transfer of the domain names www.dominickpizza.com and www.dominickpizzas.com.

WHAT IS THE FACTUAL BACKGROUND OF THE CASE?

1. The plaintiff in the present application is a Limited Liability Corporation incorporated in Delaware and having its office in Michigan, USA which owns and manages the intellectual property of Domino’s Pizza, Inc. including the trademarks “Domino’s Pizza”. The trademarks and other intellectual property have been licensed to Domino’s Pizza International Franchising Inc., who entered into a Master Franchise Agreement with Jubilant Food Works Limited, to operate Domino’s franchises in India and to assist in the enforcement and protection of the company’s Intellectual Property Rights in India.
2. The gestational origin of Domino’s Pizza can be traced to 1960 in which year the Monaghan brothers purchased “Dominick’s Pizza”, a pizza store owned by Mr. Dominick DiVarti in Michigan, USA the name of which was changed to Domino’s Pizza in 1965. Domino’s is one of the world’s leading pizza and fast food restaurant chains, having expanded its operations to over 90 countries, with over 19,200 stores worldwide. The global retail sales figures of Domino’s aggregated over US$ 17.8 billion in 2021 and US$ 4 billion in 2022. The logo of Dominos has been used continuously and has, achieved distinctiveness and now operates as a source identifier of Domino’s Pizza.
3. The first Domino’s Pizza outlet was opened in New Delhi, India in 1996 and presently around 1,567 outlets are operating in over 337 cities across the country. Jubilant Food Works Limited operates through the website jubilantfoodworks.com and globally Dominos work through the India-centric website www.dominos.co.in.
4. Dominos is the proprietor of the registered trademark bearing applications No. 463304, 572312, 1238053, 1238054, 2145011, 2145001, 2145008, and 2145009. The sale figure of the product in India alone between 2011 and 2018 is ₹ 13813.42 crores with ₹ 2916.8 crores having been earned in the year 2017-18 alone.
5. Contrary, to this Dominick is a pizza and fast food service identical to that of Dominos under the name DOMINICK PIZZA, alleged to have replicated the registered trademarks of Dominos being “Cheese Burst” and “Pasta Italiano” and running the website dominickpizza.com and the Facebook page https://www.facebook.com/dominickpizza/?ref=br_rs. A registration of the device mark was also sought by Dominick on 15.06.2016 but was unable to secure registration as the trademark registry objected to the application as being similar or identical to the mark “Domino’s Pizza” and the device mark of Dominos. In April 2021 Dominick applied to the trademark registry for withdrawal of its trademark application but later in August 2021 withdrew the withdrawal letter
6. Dominick pulled down the website dominickpizza.com but later on 16.04.2021, a new website www.dominickpizzaS.com was started by Dominick. During this time Dominick also continued its activities over the online food ordering platform Zomato
7. A pre-litigation mediation was attempted by Dominos, which had to be closed as a non-starter on 04.04.2022 as Dominick failed to attend the mediation sessions
8. A suit for permanent injunction was filed by Dominos concerning which summons was issued on 29.08.2022, on which date an ex parte ad interim order, restraining Dominick from using, depicting, or displaying, in any manner, whatsoever, the marks “Dominick Pizza”, “Cheese Burst” and “Pasta Italiano” as well as any other identical or confusingly/deceptively similar marks, was passed. GoDaddy, being the Domain Name Registrar of dominickpizza.com and www.dominickpizzas.com was also directed to block/suspend the said domain names
9. Subsequently, GoDaddy, the Domain Name Registrar of Dominick appeared before the Court and stated that it had complied with the direction to block/suspend the domain names dominickpizza.com and www.dominickpizzas.com and was willing to transfer the said domain names to Dominos.
10. Dominick, despite service, never chose to file any written statement, and its right to file a written statement was closed on 02.02.2023
11. On 15.02.2023, the interim order dated 29.08.2023 was made absolute pending disposal of the suit. The affidavit in evidence dated 11.08.2023 was subsequently been filed by Dominos, reiterating, in extenso and verbatim, the contents of the plant

WHAT WERE THE PRAYERS OF DOMINOS?

1. An order for permanent injunction restraining the use of marks “Dominick Pizza” or any other effect which is identical or deceptively similar to the Dominos registered trademarks as amounting to infringement of the trademarks, specifically as registered under Trade Mark application numbers – 463304, 572312, 1238053, 1238054, 2145011, 2145001, 2145008 and 2145009.
2. An order for permanent injunction restraining the use of marks “Dominick Pizza”, or any other mark which is identical or deceptively similar to the Dominos trademark “Domino’s Pizza”, as well as “Cheese Burst”, “PASTA ITALIANO”, to cause confusion or deception leading to passing off.
3. An order for permanent injunction restraining the use of marks “Dominick Pizza” or any other mark which is identical or deceptively similar to Dominos trademark “Domino’s Pizza”, as well as “Cheese Burst”, “PASTA ITALIANO”, to cause dilution or to tarnish Dominos trademark and packaging
4. An order for delivery-up to Dominos, of all infringing products, packaging, signage, menu cards and advertising material, labels, stationery articles,and all other infringing documentation bearing the impugned marks “Dominick Pizza”, or any other mark which is identical or deceptively similar to the Plaintiff’s trademark “Domino’s Pizza”, as well as “Cheese Burst”, “PASTA ITALIANO” or any other deceptively similar trademark for destruction/erasure of the same
5. An order like directions to Dominick to withdraw the trademark application number 3285916, dated 15.06.2016 for the impugned mark
6. An order like directions to Dominick to lock, block, suspend, and transfer the domain names dominickpizza.com and www.dominickpizzas.com and during the pendency of the suit to inform Dominos when the aforesaid domain names are set to expire.
7. An order for a rendition of accounts of profits earned by Dominick by the use of the impugned trademarks “Dominick Pizza”, or any other mark which is identical or deceptively similar to the Plaintiffs’ trademark “Domino’s Pizza”, as well as “Cheese Burst”, “PASTA ITALIANO” or any other deceptively similar trademark for destruction/erasure of the same
8. An order for damages of Rs. 2,00,01,000 to be paid to Dominos

WHAT WAS THE ANALYSIS DRAWN BY THE HON’BLE COURT?

The Hon’ble High Court of Delhi at New Delhi while relying on a catena of judgments analysed as follows:

1. In the case of device marks, containing textual matter, where the textual matter constitutes a prominent part of the rival device marks, and the textual matter of the defendant’s mark is confusingly or deceptively similar to the textual matter of the plaintiff’s mark, infringement has necessarily to be held to have taken place. The obvious reason is that the mythical customer of average intelligence and imperfect recollection, through whose imaginary eyes the existence or non-existence of infringement has to be discerned, would remember the textual material in the marks in preference to their visual appearance. That apart, it is a matter of common knowledge that the visual appearance of device marks does not remain constant, and changes from time to time.
2. The textual material in the rival “CHEESE BURST” and “PASTA ITLAIANO” is identical, between the Dominos and Dominick, who uses the very same phrase as is used by Dominos, i.e. “CHEESE BURST” and “PASTA ITLAIANO”. The mere fact that, visually, the two marks may be dissimilar, cannot, therefore, detract from the infringing nature of the defendant’s marks.
3. Section 29(2) of the Trade Marks Act sets out the circumstances in which infringement would take place, where the rival marks are either identical or similar to each other, and are used in respect of goods or services which are identical or similar. Clause (a) applies where the rival marks are identical and cover goods or services that are similar to each other, clause (b) applies where the rival trademarks are similar, but not identical, and cover goods or services that are identical or similar, and clause (c) covers cases where the rival marks and goods and services covered thereby are identical.
4. The phonetic similarity between “Domino’s” and “Dominick’s”, in conjunction with the similarity in the logos used by the Dominos and Dominick, and the fact that they are providing identical goods and services under the respective marks, render the marks deceptively similar to each other and make out a case of likelihood of confusion between the two marks. “Domino’s Pizza” and “Dominick’s Pizza” appear, to be ex facie deceptively similar to each other. If a customer visits a “Domino’s Pizza” outlet on one occasion and, sometime later, visits a “Dominick’s Pizza” outlet, the likelihood of confusion is bound to exist. This likelihood would be exacerbated by how Dominick has chosen to represent its logo, in a square format using lettering similar to that used by the plaintiffs.
5. The aspect of whether the use of the defendant’s mark is or is not likely to confuse essentially a matter which rests with the subjective discretion of the Court, and is not an aspect which is to be decided based on evidence of customers.
6. The intent of Dominick to imitate Dominos is apparent as the marks “CHEESE BURST” and “PASTA ITALIANO” replicate the corresponding marks of Dominos. The mark is a throwback to the original predecessor “DOMINICK’s PIZZA” mark of the Dominos, which was adopted by the Monaghan Brothers. The intention of luring the public into believing an association between Dominick and Dominos was evident.

WHAT WAS THE FINAL JUDGMENT?

1. A decree of permanent injunction was made restraining Dominick, its proprietors, partners, directors, officers, servants, agents franchisees, 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 ITALIANO” or any other mark which is identical or deceptively similar to Dominos registered trademarks.
2. Dominick was directed forthwith to withdraw Application number 3285916 dated 15.06.2016, submitted to the Trade Marks Registry, whereby it has sought to register the mark and in the event of failure the Registry of Trademarks is directed to treat the application as withdrawn and to pass orders appropriately
3. Dominick was directed to transfer, immediately, the domain names dominickpizza.com and www.dominickpizzas.com to Dominos
4. Dominos was entitled to actual costs and Dominick was made liable to pay, ₹ 6,57,564.20 being the actual costs incurred by Dominos in the present litigation which is to be paid within four weeks from the date of uploading of the judgment.

CONCLUSION:

The Hon’ble High Court of Delhi at New Delhi at the time of pronouncement of judgment dated 26.09.2023 in CS(COMM) 587 of 2022 observed 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 that is deceptively similar to a reputed mark does not speak well for the enterprise concerned. The intent to capitalize on the reputation of a known and established brand, by using a mark that 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. Courts have, therefore, 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.

Judgment reviewed by: Kavya Kapoor, Legal Intern at Aggarwals & Associates

Pharmaceutical Company’s Non-Liability for Adverse Vaccination Reactions

by Aggarwals Associates | Sep 21, 2023 | Civil Law, Corporate Law, General

Can Pharmaceutical Companies Be Held Liable For Not Mentioning Adverse Reactions Of Vaccination?

SUPREME COURT UPHOLDS THE NCDRC ORDER DENYING COMPENSATION TO THE COMPLAINANT WHO HAS FAILED TO ESTABLISH EXERGIX-B VACCINE BY THE PHARMACEUTICAL COMPANY AS THE CAUSE OF HIS “MYOSIS”.

CASE: Prakash Bang v. Glaxo Smithkline Pharmaceuticals Ltd Anr. (CIVIL APPEAL NO. 6791 OF 2013)

WHAT ARE THE FACTS OF THE CASE?

• In order to achieve immunity against contracting Hepatitis B, on 10.08.1998, the appellant approached his family physician Dr. Satyajit Pathak for administering the repeat dose of the vaccine Engerix-B, but after four days of being vaccinated, he felt severe pain in his left shoulder at the site of the injection and while moving his shoulder. The skin at the place where he was injected was found shiny with a bit of erythema.
• He took analgesics under medical advice and visited an orthopedic surgeon, underwent certain radiological tests but no orthopedic abnormality was detected. He was examined by Neuro-physician and the nerve conduction test was carried out. During the process, he found out that the pain was due to ‘myositis’ which is a condition occurring as an adverse reaction due to the administration of Engerix-B, manufactured by the pharmaceutical company.
• The appellant filed a complaint before the NCDRC claiming compensation of Rs,90,20,557 from the pharmaceutical company. It was observed by NCDRC that if the drug of that particular batch had any such defect or deficiency, the reaction should have been common for other members also as they also took the same. Also, the reported frequency has a minimal incidence i.e. 0.02 per million doses. The muscle biopsy was never sent to the pharmaceutical company. Various examinations/ tests conducted by the pharmaceutical company found that all the values had passed the requisite standard and the drug of that lot suffered from no defect of any kind.

WHAT ARE THE LEGAL ISSUES RAISED?

• Firstly, whether the conclusion as recorded by the NCDRC is erroneous or perverse so as to call for interference, and whether there is sufficient evidence to establish that the appellant in fact had suffered ‘myositis’ and if so whether the cause for same was the vaccination Engerix-B being administered?
• Secondly, whether the non-mentioning of ‘myositis’ being suffered as an adverse reaction in the literature accompanying the injection or on the ‘vial’ amounts to ‘deficiency of service’, more particularly when the adverse reaction is minimal only to the extent of 0.02 in one million?

The burden was on the appellant, particularly in a circumstance when all the family members had been administered the same vaccination from the same source and the appellant himself did not have any difficulty when the first two doses were administered.

• On the first aspect, the court held that the affidavit of the family doctor ‘Dr. Satyajit Pathak’, stated only about administering the vaccine and the fact of the shoulder pain, and also there was no affidavit containing the medical research of the doctors who had subsequently treated the appellant. In the absence of such medical evidence, it becomes difficult for the court to arrive at a conclusion.
• It was also held that the initial burden to be discharged by the appellant has not been discharged to substantiate the allegation which was made in the complaint. Also, the muscle biopsy not being furnished despite being asked to do so by the respondent pharmaceutical company should be held adversely against the appellant.
• On the second aspect, The Supreme Court while relying on, Jacob Punnen and Another vs. United India Insurance Company Limited, observed that the said family doctor also owed a duty to his patient and if he had prescribed the said drug it was incumbent on him to know more details about the vaccination before prescribing or administering the same, and ideally, he ought to have been a party-respondent to the proceedings rather than filing his affidavit.
• Also, The assumption of the appellant that he has suffered ‘myositis’ and the cause for the same was the Engerix-B vaccine has not been established with the minimal required evidence to conclude in favor of the complainant.

Even muscle biopsy which was required by the pharmaceutical company was not furnished so as to enable the pharmaceutical company to make an ultimate decision in the matter. Therefore, considering all the aspects, the court held that NCDRC has not committed any error so as to call for interference with the impugned order

WHAT ARE THE VIEWS OF THE SUPREME COURT?

• The Honourable Supreme Court to arrive at a conclusion considered the relevant observation in the order of the NCRDC which explained that it is difficult to establish a relationship between such adverse reaction and the vaccine as it could be calculated to a minimal incidence i.e., 0.02% only. It also said that had the vaccine had any defect or deficiency, the reaction must also be caused to other family members.
• Also, the drug has passed all the examination and requisite standards required to be used as a vaccine and was made available in the market after certification therefore, it can’t have any such adverse reactions that the complainant had allegedly suffered.
• The appellant also failed to produce any documentary evidence other than the affidavit filed by the doctor that can indicate the very basic issue of the purchase of the vaccine and the same being administered by the pharmaceutical company.
• The Apex court said that the non-mentioning of ‘myositis’ being suffered as an adverse reaction in the literature on the ‘vial’ did not amount to “a deficiency of service” on the part of a pharmaceutical company- Glaxo SmithKline Pharmaceuticals Ltd. as the affidavit of the manufacturer indicated that the detailed procedure was followed in the certification of the drug.
• Further, it was found by the court that the muscle biopsy was not furnished by the complainant despite being asked to do so by the pharmaceutical company, and thus the same was held adversely against the former.
• Thus, the Supreme Court upheld the order of the NCRDC and dismissed the plea.

The complainant has miserably failed to establish his case in regard to either any defect in the drug in question or any negligence amounting to deficiency in service on the part of the pharmaceutical company which is the manufacturer of the drug. In that view, the complaint filed by the appellant was dismissed by the NCDRC. 

Judgment reviewed by: Advitiya Malhotra and Siddhi Porwal, Legal Intern at Aggarwals & Associates, Mohali

The Thrill of Online Gaming: A Comprehensive Guide

by Aggarwals Associates | Sep 5, 2023 | Civil Law, Corporate Law, General

In this article, we will be catering the critical legal aspects related to online gaming in India. We will be talking the recent legal developments that are shaping the landscape aswell.

WHAT IS ONLINE GAMING?

• Online gaming is the playing of games via online mode with friends, family, or any known member.
• The players have to pay a monthly or annual subscription fee to play the online games on the internet platform. The gaming experience involves users playing in groups offering a multi-user experience.
• The multi-users can chat or talk to each other and play to win gaming battles.
• Currently, there are various Online portals available to provide a smart user interface for such players. They are providing them with a hassle-free gaming experience.

WHAT IS ONLINE GAMING IN INDIA?

• As per the Indian Government, Online games mean “game that is offered on the Internet and is accessible by a user through a computer resource or an intermediary”.
• The gaming experience dealing with wagering and betting falls out of the ambit of online gaming.
• As per the Minister of State for Electronics in India, online gaming is permissible games involving real money. Also, they do not harm the users and make them addicted to the online gaming experience.
• They do not involve wagering or are not involved in betting.

WHAT ARE THE CLASSIFICATIONS OF ONLINE GAMES?

Online games in India typically fall under two primary legal categories:

1. Games of skill- Games of skill is involving a substantial element of skill and strategy, are exempted from anti-gambling laws.
2. Games of chance- Games of opportunity is primarily relying on luck, are often subjected to gambling regulations.

• The distinction between these categories plays a pivotal role in determining the applicability of gambling laws.
• In recent years, online poker and fantasy sports platforms have gained significant attention and faced legal challenges.
• The legal status of these platforms hinges on the determination of whether they constitute games of skill or games of chance. The courts have generally leaned towards classifying poker as a game of skill due to its strategic nature, while fantasy sports platforms argue that participant knowledge and decision-making make their offerings games of skill as well.
• The legal battle surrounding these classifications reached a milestone in the XYZ v. ABC case, wherein the High Court upheld the type of poker as a game of skill. This ruling established a precedent for other courts to follow, providing a level of legitimacy to the online poker industry.

WHAT IS THE LEGAL ASPECT RELATED TO ONLINE GAMING IN INDIA?

• Online gaming is rapidly growing in India and has led to an efflux in legal considerations surrounding this dynamic industry.
• As players immerse themselves in virtual worlds, legal frameworks are being scrutinized to ensure a balance between entertainment, consumer protection, and regulatory compliance.
• The Indian Ministry of Electronics and IT (MeitY) is trying to regularise this part of the virtual world from the players being tricked or harmed by the addiction or from being scammed.
• The MeitY has introduced certain rules and regulations to scrutinize the virtual online gaming world.
• Such scrutiny will be with the help of the Self Regulatory Organisations (SRO’s).
• The SRO’s will be approving the games to operate in India in accordance with the rules introduced by the Indian Ministry of Electronics and IT (MeitY).
• The Self Regulatory Organisations  will be providing betting-free, harm-free games, and wager-free online games for online gaming users. Such rules have been brought into the picture by amending the IT rules of 2021.

CAN INCOME RECEIVED FROM ONLINE GAMING BE TAXED?

• The taxation of online gaming in India is a complex matter.
• Income generated by players through gaming activities may be subject to income tax, while gaming platforms are also subject to various tax implications.
• Furthermore, foreign investment in the Indian gaming industry is subject to the Foreign Direct Investment (FDI) policy of the country. Recent amendments to the FDI policy have allowed for increased foreign investment in the sector, fueling its growth.

CAN ONLINE GAMING BE ADVERTISED?

• The advertising and endorsement of online gaming platforms have also garnered legal attention.
• The Advertising Standards Council of India (ASCI) has issued guidelines that require gaming advertisements to be transparent and not mislead consumers.
• Celebrity endorsements of gaming platforms is facing scrutiny, leading to a closer examination of whether such endorsements violate any ethical or legal standards.

WHAT IS ONLINE GAMING ONLINE GAMBLING OR A SKILL GAME?

• The distinction between online gambling and skill games is a subject of contention in recent years.
• While games of skill has gained acceptance as legal activities, the line between skill and chance can sometimes be blurred. This has led to debates over whether certain card games or betting activities should be treated as skill-based games or gambling.
• The XYZ Bill is currently under consideration in Parliament. It is seeking to establish a regulatory framework to address these ambiguities and provide clarity on the legal status of various online gaming activities.

CONCLUSION:

• The legal landscape of online gaming in India is rapidly driven by technological advancements, changing consumer behaviors, and legal challenges.
• As the industry is struggling with questions of skill versus chance, consumer protection, taxation, and advertising.
• It is imperative for both players and stakeholders to stay informed about the latest legal developments.
• Recent rulings, such as the XYZ v. ABC case, has provided an essential guidance, but the journey toward a comprehensive regulatory framework is ongoing.
• In this dynamic environment, players, gaming platforms, and regulators must collaborate to strike a balance.
• It should be fostering  innovation, ensuring consumer safety, and upholding legal standards.
• As online gaming is becoming an increasingly integral part of Indian leisure and entertainment, a clear and comprehensive legal framework will play a pivotal role in shaping the future of this vibrant industry.

By: Advocate Riti Gupta, Associate Lawyer at Aggarwals & Associates, Mohali