DOMINOS IP HOLDER LLC & ANR. …..Plaintiffs
Versus
MS DOMINICK PIZZA & ANR. …..Defendants
Date of Order:- 26.09.2023
Who were Plaintiffs and what was their relation ?
Plaintiff 1 was a Limited Liability Corporation incorporated in Delaware and having its office at Michigan, USA. It owned and managed the intellectual property of Domino’s Pizza, Inc. including
the trademarks “Domino’s Pizza”, which the plaintiffs assert in the present case. Plaintiff 1 licensed its trademarks and other intellectual property to Domino’s Pizza International Franchising Inc., who entered into a Master Franchise Agreement with Plaintiff 2 Jubilant Food Works Limited, to operate Domino’s franchises in India.
Origin of Trademark of Plaintiffs
As per the origin of Domino’s Pizza was from 1960 in this year Tom Monaghan and his brother James purchased “DomiNick’s Pizza”, a pizza store owned by Mr. Dominick DiVarti in Michigan, USA. The Monaghan brothers changed the name of the entity to Domino’s Pizza in 1965, in this year the following distinctive logo, which has subsequently become a source identifier of the plaintiff, was devised by them.
Franchise given to Plaintiff no.2
Consequent to grant of franchise to Plaintiff 2, the plaintiffs commenced operations in India in 1996, when the first Domino’s Pizza outlet was opened in New Delhi. As on the date when the suit was filed, the plaintiffs were operating 1,567 outlets in over 337 cities across the country. Plaintiff 2 also operates a website www.jubilantfoodworks.com. Globally, the plaintiffs work through the India centric website www.dominos.co.in.
Social Media Presence of Plaintiffs
Social Media Presence of Plaintiffs
The plaintiffs claimed to have over 6 million followers on Facebook and over 1,40,000 followers on Twitter. The mobile app of
the plaintiff has been downloaded over 127 lakh times.
Promotional Expenses of Plaintiffs
Towards promotion of their activities, the plaintiffs expended, in the year 2017- 18 alone, over ₹ 132.75 crores, with over ₹ 674.66 crores having been expended between 2011 and 2018.
Through sales of their products, in India alone, the plaintiffs have earned, between 2011 and 2018, ₹ 13813.42 crores with ₹ 2916.8 crores having been earned in the year 2017-18 alone. The figures provided are till the year 2018. As the suit was filed during that time.
Defendant 1 provided pizza and fast food services identical to those of the plaintiffs, under the name DOMINICK PIZZA and the logo . Defendant 1 had also replicated the plaintiffs’ registered trademarks “CHEESE BURST” and “PASTA ITLAIANO” for different varieties of the food items served by it. It was also revealed that Defendant 1 was also running the website www.dominickpizza.com and the Facebook page https://www.facebook.com/dominickpizza/?ref=br_rs.
Trademark applied by Defendant no.1
Defendant 1, also applied for registration of the device mark on 15 June 2016, but has been unable to secure registration as the Trademark Registry has objected to the application on the ground that it is identical or similar to the plaintiffs’ marks “Domino’s Pizza” and the Plaintiffs’ device marks.
Pre-Litigation Mediation attempted by Plaintiff
Pre-litigation mediation was also attempted by the plaintiffs, which had to be closed as a non-starter on 4 April 2022 as Defendant 1 failed to attend the mediation sessions.
However, then, Defendant 1’s website www.dominickpizza.com was pulled down. After that, the plaintiffs were under the impression that Defendant 1 was discontined its activities. In June/July 2022 that the plaintiffs came to know that Defendant 1 was continuing its activities over the online food ordering platform Zomato.
The plaintiffs also placed on record a complaint by a customer Nitin Warikoo, on Google reviews, on which the customer complained of having been confused between the Defendant 1 and the plaintiffs because of the use of a deceptively similar name.
Defendant 1, thereafter, started a new website www.dominickpizzaS.com on 16 April 2021. It was said Defendant 1 was also franchising its business and that outlets of Defendant 1 have now spread to Ghaziabad, Noida, Delhi and various locations in Punjab.
In these circumstances, the plaint alleged that defendant has
infringed the plaintiffs’ registered trademarks and has also, by using a deceptively similar mark, sought to pass off the services provided by it as those of the plaintiff.
Summons were issued in the present suit on 29 August 2022, and an ex parte ad interim order, restraining Defendant 1, as well as others acting on its behalf, 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
www.dominickpizza.com and www.dominickpizzas.com was also
directed to block/suspend the said domain names.
Non-Appearance of Defendant no.1
Defendant 1, despite service, never chose to file any written statement. The right of Defendant 1 to file written statement was
closed on 2 February 2023.
The facts stated hereinabove disclose a clear case of infringement as well as passing off. Plaintiff 1 has been using the mark “Domino’s Pizza” as well as the distinctive logo globally since 1965 and in India since 1996. By virtue of being the owner of the said registered marks, the plaintiffs are entitled under Section 28(1)1 of the Trade Marks Act, 1999 to protect itself against infringement of the said marks.
Hon’ble High Court Observation
In the present case, the textual material in the rival “CHEESE BURST” and “PASTA ITLAIANO” is identical, between the plaintiffs and Defendant 1, who uses the very same phrase as is used by the plaintiffs, 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.
Court said, In the present case, the goods and services provided by the plaintiffs and defendant are identical, the marks of the plaintiffs and Defendant 1 are similar to each other, and cover identical goods or services. Phonetically, too, “Domino’s Pizza” and “Dominick’s Pizza” are similar.
Thus, the phonetic similarity between “Domino’s” and
“Dominick’s”, in conjunction with the similarity in the logos used by
the plaintiffs and Defendant 1, and the fact that they are providing identical goods and services under the respective marks, the marks are deceptively similar to each other and clearly makes out a case of likelihood of confusion between the two marks.
Likelihood of Customer Confusion
“Domino’s Pizza” and “Dominick’s Pizza” appeared, to Hon’ble Court, to be ex facie deceptively similar to each other. Court said, If such a customer visits a “Domino’s Pizza” outlet of the plaintiff on one occasion and, sometime later, visits a “Dominick’s Pizza” outlet
of Defendant 1, likelihood of confusion is bound to exist. This
likelihood would be exacerbated by the manner in which Defendant 1 has chosen to represent its logo, in a square format using lettering
similar to that used by the plaintiffs.
Bad Intention of Defendant no.1
The intent of Defendant 1 to imitate the plaintiffs was apparent.
of the three rival marks, the marks “CHEESE BURST” and “PASTA
ITLAIANO” replicated the corresponding the marks of the plaintiffs.
The mark was apparently a throwback to the original predecessor “DOMINICK’s PIZZA” mark of the plaintiffs, which was adopted by the Monaghan Brothers. The intention of luring the public into believing an association between Defendant 1 and the plaintiffs,
therefore, stared one in the face.
The facts of the case, therefore, clear case of infringement was made out against Defendant 1, of the plaintiffs’ registered trademarks.
Court observation relating to food items
The Court was inclined to note, 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 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.
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.
In the circumstances, Hon’ble Court directed that :-
i. Decree of permanent injunction against Defendant no.1,
ii. Defendant 1 was directed forthwith to withdraw Application in Trademark Office,
iii. Defendant 2 was directed to transfer, forthwith, the domain names www.dominickpizza.com and www.dominickpizzas.com to the plaintiff,
iv. The plaintiffs was ordred to be paid a cost of Rs. 6,57,564.20. Accordingly, Defendant 1 was directed to pay, to the plaintiffs, ₹ 6,57,564.20 being the actual costs incurred by the plaintiffs in the present litigation.
The suit was decreed in the aforesaid terms.
Read, Reviewed & Edited by