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?
- 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.
- 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.
- 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.
- 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.
- 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
- 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
- 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
- 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
- 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.
- Dominick, despite service, never chose to file any written statement, and its right to file a written statement was closed on 02.02.2023
- 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?
- 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.
- 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.
- 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
- 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
- An order like directions to Dominick to withdraw the trademark application number 3285916, dated 15.06.2016 for the impugned mark
- 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.
- 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
- 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:
- 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.
- 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.
- 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.
- 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.
- 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.
- 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?
- 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.
- 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
- Dominick was directed to transfer, immediately, the domain names dominickpizza.com and www.dominickpizzas.com to Dominos
- 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.
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