Delhi High Court: In a case where Dominos IP Holder LLC, popularly known as Dominos (‘plaintiff’) was seeking protection of the mark ‘Domino’s Pizza’, and the accompanying device mark, logo mark, as also the marks ‘Cheese Burst’ and ‘Pasta Italiano’, its popular dishes as Defendant 1 was using a deceptively similar logo, mark, and trade name – ‘Dominick Pizza’ along with other registered trademarks, such as ‘Cheese Burst’ and ‘Pasta Italiano’, Prathiba M Singh J. granted an ex-parte ad interim injunction in favor of the plaintiffs as prima facie case is established, balance of convenience lies in favour of the plaintiff and irreparable injury would be caused if the injunction is not granted.
The two conflicting marks are:
It is interesting to note that Plaintiff 1 company was founded in Michigan, USA, when Tom Monaghan, along with his brother James Monoghan, purchased a pizza store by the name “DomiNick’s Pizza”, owned by Mr. Dominick DiVarti. But, in the year 1965, the Monaghan’s purchased two more restaurants, and changed the name to Domino’s Pizza. Since then, Plaintiff 1 has continually adopted the mark ‘Domino’s Pizza’.
However, Defendant 1, being Dominick Pizza, through its proprietor Mr. Sandeep Kumar Sharma, has three outlets i.e., one in Indirapuram, Ghaziabad, Uttar Pradesh, the second one at Raj Nagar Extension, Ghaziabad, Uttar Pradesh, and lastly in Nakodar, Mehatpur, Punjab. Defendant 1 is also unauthorizedly using the Plaintiffs’ other registered trademarks, such as ‘Cheese Burst’ and ‘Pasta Italiano’.
The Court noted that the Defendants have used the name ‘Dominick Pizza’, which is nothing but the identical historical name of the Plaintiff’s store. Thus, it is clear that the name ‘Dominick’ is integrally and historically associated with the Plaintiffs, and the use of an identical name as the founder/predecessor of the Plaintiffs in a similar logo form for pizzas would be confusing and deceptive in nature. The dishonesty in the adoption is further strengthened by the fact that the Defendants are copying various flavour variants of the Plaintiffs, such as ‘Cheese Burst’ and ‘Pasta Italiano’.
The Court further noted that on perusing the record, it is made clear that the competing marks are deceptive of each other. The manner of the listings of the Defendant 1 on various social media platforms and online ordering platforms and reviews of the consumers on Google Reviews concludes that the name and business of the Defendant 1 is being confused as that of the Plaintiffs’ outlets resulting in severe disrepute and dilution of the Plaintiffs’ mark and business.
Thus, the Court granted ex-parte ad interim injunction against Defendant 1, its proprietors, partners, directors, officers, servants, agents, franchisers and all others acting for and, on its behalf, and are restrained 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 impugned marks ‘Dominick Pizza’, ‘Cheese Burst’ and ‘Pasta Italiano’ or any other marks or devices/logos which are identical or confusingly/deceptively similar to the Plaintiff’s registered trademarks.
[Dominos IP Holder LLC v. Dominick Pizza, CS (Comm) 587 of 2022, decided on 29-08-2022]
Advocates who appeared in this case :
Mr. Pravin Anand, Mr. Shantanu Sahay, Ms. Imon Roy and Mr. Apoorv Bansal, Advocates, for the Plaintiff;
None, for the Defendant.
*Arunima Bose, Editorial Assistant has put this report together.
