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Synopsis

Recently, the Delhi High Court issued directives to online food delivery platforms Swiggy and Zomato, ordering to delist restaurants that were found infringing Domino’s trademark. This action stemmed from a trademark infringement suit filed by Domino’s. 

“Court is satisfied that 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”, the bench of Justice Anish Dayal held. 

Advocate Pravin Anand, representing Domino’s, noted that Domino’s IP Holder LLC, a subsidiary of Domino’s Pizza group of companies oversaw specific intellectual property matters under the overall ownership of Domino’s Pizza, LLC. However, Jubilant Food Works Limited held exclusive rights to operate Domino’s franchises in India, collaborating with Domino’s to safeguard intellectual property rights and business interests within the Indian market.

Advocate Anand further observed that the adoption of the trademark by Domino’s dates back to 1965, with a presence in over 90 countries and more than 20,500 stores. The initial selection of the mark was arbitrary, unrelated to pizza or fast food, thus rendering it distinctive and uniquely associated with Domino’s. He highlighted that through extensive and continuous use, the trademarks have garnered substantial goodwill and reputation, reflected in their revenue and promotional activities.

Furthermore, Advocate Anand argued that Jubilant Food operated 1,928 Domino’s Pizza outlets across 407 cities in India, constituting Domino’s largest market outside of the United States. They maintained a significant online presence, accepting orders through their website and various food-ordering platforms such as Zomato and Swiggy. Domino’s had secured statutory rights in their trademarks under the Trade Marks Act of 1999.

Consequently, Advocate Anand asserted that Domino’s possessed the exclusive right to utilize and prevent the use of their trademarks in connection with their business endeavors. They have consistently taken measures to protect their intellectual property rights, securing injunction orders in their favor on multiple occasions, he submitted.

Advocate Anand further raised concerns over the unauthorized adoption of identical or deceptively similar trade names, marks, and names by various entities, and operating outlets selling similar products online through platforms like Zomato and Swiggy.

Advocate Anand contended that the defendants unfairly capitalized on search results related to Domino’s trademark and mark, causing confusion among consumers. Instances of customer confusion were cited, wherein customers complained about products supplied by the defendants, mistakenly believing they originated from Domino’s outlets.

The court found Domino’s arguments compelling and granted a temporary injunction until the next hearing. The court acknowledged the potential irreversible harm Domino’s could suffer without the injunction. Consequently, the court issued a temporary injunction, effective until the next hearing, in favor of Domino’s and against the defendants.

The injunction instructed the defendants to remove specified links and prohibited the use of certain trademarks owned by Domino’s.

Subsequently, the court scheduled the matter for September 17, 2024.

Case Title: Dominos IP Holder LLC v M/S Dominic Pizza & Ors