By Sangeeta Sharma
New Delhi, Oct 3, (LAB) The Delhi High Court recently imposed a fine of Rupees 6,57,564.20 on a pizza establishment located in Ghaziabad for infringing the Intellectual property Rights of US based famous food chain Domino’ s Pizza.
While imposing the fine, Justice C. Hari Shankar prohibited the Ghaziabad based pizza selling company from using the similar name Dominick Pizza,’ as it amounts to Trademark infringement.
Justice C Hari Shankar said that ‘Domino’s Pizza’ and ‘Dominick’s Pizza’ possessed a phonetic similarity, deeming the marks deceptively similar and likelihood of confusion would arise when an individual of average intelligence and imperfect recollection patronises Domino’s outlet and subsequently visits a Dominick’s Pizza outlet.
Mr. Pravin Anand, Lawyer appearing for the Indian entity of Domino’s Pizza contended that Ms. Dominick Pizza (Defendant 1) has infringed the Trade Mark of his client which is a well known food chain across the world.
Mr. Pravin Anand asserted that not only the name has been replicated but also the plaintiffs’ registered trademarks “CHEESE BURST” and “PASTA ITLAIANO” for different varieties of the food items served by it have been replicated by the offending party.
Other Lawyers who appeared for Domino Pizza are Mr. Shantanu Sahay, Ms. Imon Roy and Ms. Vareesha Irfan.
Mr Anand contended that in January 2020 they came to know that the offending party was running a website by the name of www.dominickpizza.com and also running the Facebook page by the name of- https://www.facebook.com/dominickpizza/.
In August 2022, the Court issued an interim ex parte order against Dominick Pizza.
Mr. Pravin Anand told the court that after further investigation it was found that the offender had on 15 June 2016 also applied for registration of the device mark , 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.
In April 2021, the offender applied to the Trademark Registry for withdrawal of its trademark application but, later, in August 2021, withdrew the withdrawal letter through another Counsel.
Mr. Anand said that a pre-litigation mediation was also attempted by us which had to be closed on April 4, 2022 as a non-starter as the offender failed to attend the mediation sessions.
Adv Pravin Anand
The Petitioner also made GoDaddy, which had registered the domain name as party in the suit.
The court directed GoDaddy to block/suspend the two domain names www.dominickpizza.com and www.dominickpizzas.com. Subsequently GoDaddy’s counsel appeared before the high court and stated that it had complied with the court orders and taken down both the domain names. GoDaddy also said it is willing to transfer the said domain names to the petitioner.
The offending party despite being served notice, never chose to file any written statement. The right of Defendant 1 to file written statement was closed on February 2, 2023.
The petitioner contended that, after the defendant’s website www.dominickpizza.com was pulled down, we were under the impression that it had discontinuing its activities.
It was only in June/July 2022 that the petitioner came to know that the offending party was continuing its activities over the online food ordering platform Zomato. The petitioners 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 name of the forged party and the petitioner because of the use of a deceptively similar name.
The Defendant thereafter, started a new website www.dominickpizzaS.com on April 16, 2021. It is further alleged that Defendant was also franchising its business and that his outlets had by then spread to Ghaziabad, Noida, Delhi and various locations in Punjab. In these circumstances, the complainant alleges that defendant infringed its registered trademarks and has also, by using a deceptively similar mark, sought to pass off the services provided by it as those of his own.
The case was filed by a Dominos IP Holder LLC (plaintiff no 1) in the Delhi High Court that it is a Limited Liability Corporation incorporated in Delaware and has its office at Michigan, USA. It owns and manages the intellectual property of Domino’s Pizza, Inc. including the trademarks “Domino’s Pizza”.
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. The Master Franchise Agreement also obligated Plaintiff 2 to assist Plaintiff 1 in enforcement of its intellectual property rights in India.
The gestational origin of Domino’s Pizza may be traced to 1960 in which 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 which year the following distinctive logo, which has subsequently become a source identifier of the plaintiff, was devised by them:
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 retails sales figures of Domino’s aggregated over to US$ 17.8 billion in 2021 and US$ 4 billion in 2022. The logo has been used by the plaintiffs continuously and has, therefore, achieved distinctiveness. It now operates as a source identifier of Domino’s Pizza.
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. and claim 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. 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 when the suit came to be filed. The plaint asserts that the mark “Domino’s”, with the distinctive logos, featuring faces of a domino, are unique, coined and arbitrary, and that the word “Domino’s” has no etymological significance bearing any relation to the services provided under the said mark. By virtue of their being distinctive and arbitrary, the plaint asserted that the mark is entitled to additional intellectual property protection.
The Court noted, 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 capitalize 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, High Court remarked.
Justice said that The 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.
The Court noted that the offender really has no substantial defence to offer, Defendant 1 has not chosen even to enter appearance in the present matter, despite service. In the circumstances, a clear case of infringement having been made out.
The Court directed that there shall be a decree of permanent injunction restraining Defendant 1, 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 whatsoever, the marks “Dominick Pizza”, , “CHEESE BURST” and “PASTA ITLAIANO” or any other mark which is identical or deceptively similar to the Plaintiffs’ registered trademarks in any manner whatsoever.
The court directed the Defendant 1 to withdraw Application filed on June 15, 2016, to the Trade Marks Registry, whereby it has sought to register the mark . In the event of failure, to do so the Registry of Trademarks is directed to treat the application as withdrawn and to pass orders appropriately.
The Court directed GoDaddy to transfer, the domain names www.dominickpizza.com and www.dominickpizzas.com to the plaintiff.
The Court directed the Defendant 1 to pay Rs. 6,57,564.20, the actual cost incurred by the plaintiffs in the present litigation within four weeks of uploading of this judgment on the website of the Court. The Judgement was pronounced on September 26, 2023/ LAB/SNG/