The growth of online platforms for food delivery has opened up new opportunities for food entrepreneurs in India. With this rise, investors are showing greater interest in the Indian food and beverage sector, leading to increased funding and the need for intellectual property rights protection for brands operating in the food industry in India. In this article, Compliance Calendar traces the case history and key takeaways of a landmark suit of trademark infringement involving Domino’s Pizza, while also highlighting the need to protect your trademarks in the food industry.

Case title : Dominos IP Holder LLC & Another versus Ms Dominick Pizza & Another, CS (COMM) 587/2022

Brief Facts of the case

The plaintiff - Domino’s Pizza

• Globally, the plaintiffs work through the India centric website www.dominos.co.in.

• 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 Defendant - Dominick Pizza

The leading defendant in this case is a pizza brand operating under the name “Dominick Pizza”. They started operating under the website www.dominickpizza.com and a corresponding Facebook page. They also applied for a trademark registration for the same, but were denied the same by the Trademark Registry on grounds of similarity with the plaintiff’s marks.

The original brand Domino’s noticed that their trademark was being infringed by Dominick pizza, by operating under this misleading name on Zomato. They were also actively franchising

their outlets in locations in Delhi, Ghaziabad and Punjab. In their menu, some items offered by the plaintiff such as “Cheese Burst” and “Pasta Italiano” were also offered.

Facts and Submissions that strengthened the case for the plaintiff, Domino’s Pizza - Key takeaways

• Distinctive logo and trademark registration: The plaintiff has globally used its distinctive red and blue logo, since the year 1965. Further, the same has been put to use 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.

• Phonetic similarity that is likely to cause confusion: In order to prove the deceptive nature of an infringing mark, the courts look at the degree of resemblance between the two marks. This resemblance may be phonetic, visual or in the basic idea adopted by the Plaintiff’s mark. The court looked at the exact same phrasing involved in including “Cheese Burst” and “Pasta Italiano” by the defendants in their menu.

• Lack of registration of the defendant’s trademark - Any defendant not being a registered proprietor of the said trademark, stands in a vulnerable position in the court of law when it comes to defending use of a deceptive trademark.

• The Pianists test applied by the court to judge infringement by a deceptive trademark - Mere similarity between two marks does not, by default, result in a trademark infringement. The court looks at a classic test, called the “Pianist test” evolved in the United Kingdom to judge whether two marks that sound similar are deceptively similar. To determine this, the court states:

“You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion—that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods—then you may refuse the registration, or rather you must refuse the registration in that case.”

Based on the test above, the court conclusively determined that the two marks - Domino’s and Dominick’s being phonetically similar can lead to confusion in the customer’s minds.

More scrutiny required when trademarks relating to consumable items are involved - In this judgement, Justice Hari Shankar noted that “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. 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.”

Understanding the various reliefs offered by the Court in a suit involving trademark infringement

Permanent Injunction

In this case, the court granted relief in favor of Domino’s Pizza and passed a decree of permanent injunction against Dominick Pizza. This means that all proprietors, partners, directors, officers, servants, agents franchisers and all others acting for and on behalf of Dominick Pizza are barred 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”.

Transfer of all misleading domain names

The court also directed to transfer, forthwith, the domain names www.dominickpizza.com and www.dominickpizzas.com to the plaintiff. This is helpful in plugging immediate losses and cautions the customers against the trademark infringement.

This court noted that an amount valued at 6,57,564.20 being the actual costs were incurred by the plaintiffs in the present litigation. Thus, the court ordered the defendants to pay the same as costs of litigation.

For the latest updates on compliances applicable for the food industry, trademark filing, trademark registration for your food business, consult the legal resources available on our website at Compliance Calendar. You may also consult our in-house legal professionals to ensure that you have the most up-to-date advice on filing for trademarks and pursuing a case for trademark violation in India.