Delhi High Court grants interim relief to Domino’s Pizza in trademark case

The Delhi High Court recently granted interim relief to popular pizza chain, Domino’s pizza, by restraining 15 entities (defendants) from using deceptively similar marks such as ‘Domnic’s’, ‘Dominic’, ‘Dominic’s, ‘Domnik’, ‘Daminic’, ‘Daminic’s’, etc. to market their pizza products [Dominos IP Holder LLC & Anr vs M/s Domnics Pizza & Ors].Justice Saurabh Banerjee observed that if the defendants are allowed to continue using trade names that were deceptively similar to Domino's Pizza, it could have disastrous consequences on human health.“Relevantly, since the present dispute involves edible products, this Court is of the view that the threshold for establishing deceptive similarity is lower than that applied in other cases. In essence, any confusion between such products, if allowed to continue, can lead to disastrous consequences on human health. Therefore, this Court has to adopt a more cautious and stringent approach for judging the likelihood of confusion and to exercise greater care,” the Court stated. .Domino’s had submitted that it was founded in the year 1960 under the name ‘Dominick’s Pizza.' The name was changed to ‘Dominos’s’ in 1965 and since then, it has has been continuously using the trademarks ‘Domino’s’ and ‘Domino’s Pizza.'Domino's had learnt through market sources that 15 entities are using its previous trade name ‘Dominick’s Pizza.'It, therefore, moved the High Court seeking a permanent injunction to restrain such trademark infringement, passing off, dilution of marks, and tarnishment of its name. .The Court stated that it is prima facie evident that the defendants’ marks were deceptively similar and phonetically identical to the erstwhile trade name used by Domino’s, namely 'Dominick’s Pizza', as well as the present trademark (Domino’s).This similarity could confuse ordinary consumers, the Court said. “The impugned marks are also deceptively similar to plaintiffs’ presently registered mark and consumers of average intelligence and imperfect recollection are likely to associate the defendants’ product with that of the plaintiffs," the May 28 order stated. .Since the defendants operate in the same line of business, they would have been aware of the Domino’s trademarks and so there is no justifiable reason for them to adopt a similar trademark, the Court added. Therefore, till the next date of hearing, the Court restrained the defendants from advertising, selling, offering for sale or marketing their products by using such similar trademarks. Further, the Court directed food aggregators Zomato and Swiggy to delist, takedown and/ or suspend such listings.The case will be heard next on September 17..Advocates Shantanu Sahay, Imon Roy and Vareesha Irfan appeared for Dominos. Advocates Abhay Pratap Singh and Mitali Umat appeared for Swiggy. .[Read order]