Delhi HC restrains Pizza-outlet from using 'Dominick Pizza'

Delhi High Court issues a permanent injunction restraining a Ghaziabad-based Pizza outlet from using the mark ‘Dominick Pizza’.

By Advocate Suresh Tripathi |Published: 2023-10-06

The Delhi High Court recently issued a permanent injunction restraining a Ghaziabad-based Pizza outlet from using the mark ‘Dominick Pizza’ since it infringed upon the trademark of multinational pizzeria giant, Domino’s Pizza [Dominos IP Holder LLC & Anr v Ms Dominick Pizza & Anr].

Justice C Hari Shankar found that ‘Domino’s Pizza’ and ‘Dominick’s Pizza’ were phonetically similar (similar sounding) and held the marks to be deceptively similar.  

The judge explained that there was a likelihood of confusion that was bound to arise over the products if a customer of average intelligence and imperfect recollection visits the Domino’s outlet and then visits a Dominick's Pizza outlet.

“This likelihood would be exacerbated by the manner in which Defendant 1 [Dominick’s] has chosen to represent its logo, in a square format using lettering similar to that used by the plaintiffs,” the Court added.

The judge also emphasised that courts have to be vigilant in ensuring that such imitative attempts are not allowed to go unchecked in trademarks, particularly when they relate to consumable items or eateries. 

"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," the Court said.

The Court was hearing a trademark infringement suit filed by Domino’s against Dominick Pizza for using an identical name, as well as for using registered trademarks such as ‘Cheese Burst’ and ‘Pasta Italiano.'

In August 2022, the Court issued an ex parte interim order against Dominick Pizza.

In the final order, Justice Shankar also observed that running an eating house with a mark deceptively similar to a reputed mark does not speak well for the enterprise.   

“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,” the Court said.

It further observed that the aspect of whether an infringing mark is or is not likely to result in confusion is essentially a matter which is to be decided on the subjective discretion of the Court. It is not an aspect which is to be decided on the basis of evidence of customers, the Court added.

The Court ultimately held that Dominick Pizza has clearly infringed Domino's Pizza's trademark. The Court, therefore, restrained Dominick Pizza from using such a name and also the marks ‘Cheese Burst’ and ‘Pasta Italiano.'

It also ordered Dominick Pizza to withdraw is application from the Trade Marks Registry for the registration of this mark and transfer its internet domain names to Domino’s.