From Dough to court room : The domino’s vs. Dominick’s Trademark Clash

20th October, 2023 - 7:27 am Categories: Legal Issues 0 Comments

Introduction

Picture this: A sizzling hot pizza, fresh out of the oven, covered in gooey cheese and savory toppings. It’s a universal delight, and as of September 26, 2023, it’s at the center of a sizzling legal showdown. The Delhi High Court has just delivered a verdicts hook the culinary world – a permanent injunction against a pizza joint in Ghaziabad, all because of a single word: “Dominick Pizza.”

In the legal tussle of Domino’s IP Holder LLC &Anr v M/s Dominick Pizza &Anr, the court decided that “Dominick Pizza” crossed a line, infringing upon the trademark of the global pizza giant, Domino’s Pizza. The reason? It was deemed strikingly similar, both in sound and appearance, to the trademark of the global pizza giant, Domino’s Pizza.

Understanding trademarks and deceptive similarity

Before diving into the specifics of the Domino’s vs. Dominick’s Pizza case, it’s essential to understand what trademarks are and the concept of deceptive similarity.

A trademark is a distinctive symbol, word, phrase, or design that identifies and distinguishes the source of goods or services in the marketplace. Trademarks play a vital role in protecting a company’s brand identity, reputation, and consumer trust. When two trademarks are similar to the extent that they can cause confusion among consumers about the origin of the products or services, it constitutes trademark infringement.

Deceptive similarity refers to a Situation where two trademarks are so a like that they’re likely to deceive consumers into believing that the goods or services they represent come from the same source or are affiliated with each other. In such cases, the court may rule in favor of the party claiming trademark infringement.

FACTS OF THE CASE

In the present case,the plaintiff, Domino’s Pizza, alleges that the defendant, Dominick Pizza, has engaged in trademark infringement and passing off. Plaintiff Domino’s Pizza holds the intellectual property rights for its renowned brand, including the trademark “Domino’s Pizza.” These rights were licensed to Domino’s Pizza International Franchising Inc., which, in turn, partnered with Plaintiff2, Jubilant Food Works Limited, to  over see Domino’s franchises in India. The Master Franchise Agreement mandated Plaintiff 2 to enforce these intellectual property rights within India.

The crux of the plaintiff’s allegations is that Dominick Pizza, the defendant, has wilfully engaged in actions that constitute a blatant infringement of Domino’s Pizza’s trademark rights and deliver at attempt to deceive and confuse consumers. The Plaintiff contends that Dominick Pizza not only used the name “DOMINICK PIZZA” but also replicated the Plaintiff’s registered trademarks, specifically “CHEESE BURST” and “PASTA ITLAIANO,” for their own food offerings.

The Plaintiff also cited a customer complaint, posted on Google reviews, where the customer expressed confusion between Dominick Pizza and the Plaintiff due to the use of a deceptively similar name. The Plaintiff argued that the Defendant’s actions has caused harmto both consumers and the Plaintiff’s brand reputation. As a result, the plaintiffs filed a suit seeking permanent injunctions and damages.

ISSUES

• Whether Dominick Pizza’s use of the name “DOMINICK PIZZA,” a logo resembling Domino’s Pizza’s trademark, and replication of the Plaintiff’s registered trademarks “CHEESE BURST” and “PASTA ITALIANO” for their food offerings constitutes trademark infringement?
• Whether Dominick Pizza’s actions amount to passing off, creating confusion among consumers regarding the origin of the products and services?

RULE

• Section(2) of The Trade Marks Act,1999

ANALYSIS

The court’s analysis began by invoking Section 29 of the Trade Marks Act, which delineates the circumstances of trademark infringement. The court emphasized that in cases of trademark infringement, the fundamental comparison should be between the marks themselves.

Crucially, the court noted that in cases involving device marks with textual elements, the textual content’s similarity takes precedence. This observation drew upon established legal principles, particularly the judgment in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories[i]and K.R. Chinna Krishna Chettiar v. Shri Ambal and Co[ii]. The court highlighted that even if there’s visual dissimilarity between marks, if the textual content is deceptively similar, it constitutes trademarkinfringement.Thisunderscorestheimportanceoftextualcontent in determining infringement.

[Image Sources: Shutterstock]

Furthermore, the judgment emphasized the close relationship between deceptive similarity and likelihood of confusion, citing the “Pianotist test.” It clarified that even minor similarities causing consumers to wonder about a connection can constitute confusion. Phonetic similarity was a key factor in the court’s analysis. The court found that”Domino’s Pizza”and”Dominick’s Pizza” were phonetically similar, which, when coupled with similar logos and identical goods and services, strengthened the likelihood of confusion.

The court also considered the defendant’s intent to imitate the plaintiff’s brand, which was apparent in this case. This intention to mislead consumers played a crucial role in reaching the judgment.

Ultimately, the court concluded that the defendant had indeed infringed upon the plaintiff’s trademarks and is guilty of passing off as well. The judgment underscored the need to protect intellectual property rights and the potential legal consequences of trademark infringement,citing the Supreme Court’s judgment in Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia[iii].

In addition to the legal intricacies of trademark infringement, the judgment delved into the specific context of the fast-food industry. It emphasized that a higher degree of care and caution is expected in trademark disputes with in this sector. The court noted that running an eating house using a mark that is deceptively similar to are puted mark could compromise consumer trust and quality assurance. Therefore, the court stressed the importance of vigilance in ensuring that imitative attempts in the fast-food industry do not go unchecked, as they can harm established brands and deceive consumers.

CONCLUSION

This case highlights the paramount importance of protecting intellectual property rights, particularly within the fast-food sector. The Delhi High Court’s verdict underscores the need for rigorous scrutiny in trademark disputes, emphasizing that even subtle similarities, both visually and phonetically, canleadtoconsumerconfusionandharmabrand’sreputation.Thiscaseserves as a cautionary tale for businesses,emphasizing the significance of prudent brand selection in the competitive food industry.Furthermore,the ruling under scores the role of intent in such disputes, as deliberate attempts to imitate established brands face legal consequences. Ultimately, it reaffirms the commitment to justice in the world of commerce and brand integrity.

Author: Simran Khan, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

REFERENCES

1. TheTradeMarksAct,1999
2. DominickPizzaCS(COMM)587/2022,decidedon 26-09-2023
3. https://www.scconline.com/blog/post/2023/10/04/delhi-hc-restrains-dominick-pizza-from

-using-dominos-registered-trade-mark-legal-news/

4. https://www.theippress.com/2023/10/05/loaded-with-cheese-and-deception-dominick-pizza-permanently-restrained-from-using-mark-deceptively-similar-to-dominos/

[i]1964 SCC OnLine SC 14

[ii](1969) 2 SCC 131

[iii](2004) 3 SCC 90