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Synopsis

The Delhi High Court, recently, granted an interim injunction to Domino’s against a Punjab-based outlet Donito's for displaying a mark identical or deceptively similar to Domino’s registered trademark. The court clarified that Domino’s established a prima facie case warranting an ex-parte ad interim injunction. The balance of convenience favored Domino’s, and they were likely to suffer irreparable harm if the requested injunction was not granted.

The bench of Justice Anish Dayal held, “The plaintiffs have made out a prima facie case for grant of an ex-parte ad interim injunction till the next date of hearing. Balance of convenience lies in favour of plaintiffs, and they are likely to suffer irreparable harm in case the injunction, as prayed for, is not granted”. 

An application was filed by Domino’s seeking a permanent injunction to restrain Donito’s from promoting, selling, marketing, or packaging any product or material using, depicting, or displaying in any manner any mark identical or deceptively similar to Domino’s registered trademarks.

Domino’s, represented by Advocate Pravin Anand, asserted that they were the first and prior adopters of the mark since 1965, operating in over 90 countries with more than 20,500 stores. The initial adoption of the mark was arbitrary, as it had no meaning or significance related to pizza or fast food restaurants, making it distinctive and exclusively associated with their goods. Consequently, due to their extensive and continuous use, their trademarks acquired immense goodwill and reputation.

Accordingly, Domino's contended that they had the exclusive right to use and restrain the use of the noted trademarks, in relation to their business.  Domino's was aggrieved by the actions of a Punjab-based food outlet that used a phonetically and visually deceptively similar mark ‘DONITO’S’ to sell identical goods, including pizzas and burgers.

The court issued an ex-parte ad interim injunction in favor of Domino’s under the following terms:
a) Donito’s along with any representatives acting on their behalf, was restrained from advertising, promoting, selling, marketing, or packaging any products, specifically pizzas and burgers, using marks identical or deceptively similar to Domino’s registered trademarks.
b) Donito’s was specifically directed to remove all references to the contested device marks concerning pizzas and burgers from their domain www.donito’s.in within one week.

Donito’s were instructed to file their reply within eight weeks, providing an advance copy to Domino’s, who may file a rejoinder if desired, before the next hearing date.

Accordingly, the court listed the matter for October 15, 2024.

Case Title: Dominos IP Holder LLC v M/S MG Foods & Anr.