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Synopsis

The Delhi High Court has recently restrained a Ghaziabad-based pizza outlet named ‘Dominick Pizza’ from using phonetically similar (similar sounding) marks and ruled that the marks were deceptively similar to "Domino's Pizza."

The bench of Justice C Hari Shankar said that there was a "high risk of product confusion" if a customer of average intelligence and faulty recollection visited a Domino’s location and then a Dominick’s Pizza location.

“This likelihood would be exacerbated by the manner in which Dominick’s has chosen to represent its logo, in a square format using lettering similar to that used by the plaintiffs – Domino’s Pizza”, the judge said in its order dated September 26.

The single-judge bench emphasized the importance of courts being attentive in ensuring that such imitative attempts in trademarks are not allowed to go unchecked, particularly when they relate to consumable items or eateries.

“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,” it said.

It also added, “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”.

In a final ruling, the judge said that the plaintiff had clearly made out a case of infringement by ‘Domnick Pizza’.

Conclusively, the court granted a permanent injunction restraining ‘Domnick Pizza’ 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.

The judge also directed ‘Domnick Pizza’ to withdraw its application submitted before the Trade Marks Registry, whereby it had sought to register the mark.

“Defendant 1 shall be liable to pay, to the plaintiffs, ₹ 6,57,564.20 being the actual costs incurred by the plaintiffs in the present litigation. Let the costs be paid within a period of four weeks from the date of uploading of this judgment on the website of this Court”, the judge ordered.

Notably, in September 2022, Justice Prathiba M. Singh had restrained a Ghaziabad-based pizza outlet named ‘Dominick Pizza’ from using a deceptively similar and identical trademark as ‘Domino’s Pizza'.

"The manner in which Defendant No. 1 is listed on various social media platforms and online ordering platforms leaves no doubt in the Court's mind that Defendant No. 1's name and business are being confused as that of the Domino's outlets," the court had noted.

The court had then believed that the balance of convenience lied in favour of the plaintiff, and thus had granted an ex-parte ad interim injunction in favor of Domino's.

Case Title: Dominos IP Holder LLC & Anr. v. MS Dominick Pizza & Anr.