Delhi High Court: In a case wherein, the plaintiffs alleged infringement, by Defendant 1, Dominick Pizza of the plaintiffs registered mark ‘Domino’s Pizza’, ‘CHEESE BURST’ and ‘PASTA ITLAIANO’, C. Hari Shankar, J.*, granted the permanent injunction restraining Defendant 1, from using in any manner the marks ‘Dominick Pizza’, 
, ‘CHEESE BURST’ and ‘PASTA ITLAIANO’ or any other mark which was identical or deceptively similar to the plaintiffs’ registered trade marks.
Background
In the instant case, Plaintiff 1, Dominos IP Holder Limited Liability Corporation was incorporated in Delaware with its office at Michigan, USA. Plaintiff 1, owned and managed the intellectual property of ‘Domino’s Pizza’ and had licensed its intellectual property to Domino’s Pizza International Franchising Inc.
Domino’s Pizza International Franchising Inc. entered into a Master Franchise Agreement with Plaintiff 2, Jubilant Food Works Limited, to operate Domino’s franchises in India which obligated Plaintiff 2 to assist Plaintiff 1 in enforcement of the intellectual property rights of Plaintiff 1 in India. Therefore, for the purpose of intellectual property rights, the plaintiffs operated as a single economic entity.
In 1960, the Monaghan brothers purchased a pizza store named ‘DomiNick’s Pizza’ and in 1965, they changed the name to Domino’s Pizza, and also devised a distinctive logo, 
, which had subsequently become the source identifier of Domino’s Pizza.
Currently, Domino’s Pizza was one of world’s leading pizza and fast-food restaurant chains, with its operations to over 90 countries and over 19,200 stores worldwide. The plaintiffs, had commenced its operation in India in 1996, when the first was opened in New Delhi.
The plaintiffs asserted that the mark ‘Domino’s’ with the distinctive logo was unique, coined, arbitrary and the word had no relation to the services provided under the said mark. Plaintiff 1 was also proprietor of the registered trade marks 
, 
, 
, 
and 
Further, Defendant 1 provided pizza and fast-food services identical to the Domino’s Pizza, under the name ‘DOMINICK PIZZA’ with the logo 
. Defendant 1 had also replicated the plaintiff’s registered trade marks ‘CHEESE BURST’ and ‘PASTA ITALIANO’.
The plaintiffs claimed that in January, 2020, they came to know that Defendant 1, was running the website www.dominickpizza.com, Facebook page and had also applied for registration of the device mark 
on 15-06-2016. However, the Trade Mark Registry objected to Defendant 1’s registration of the device mark on the ground that it was identical or similar to the plaintiff’s marks ‘Domino’s Pizza’ and it’s device marks 
and 
. In April, 2021, Defendant 1 applied to the Trade Mark Registry for withdrawal of its trade mark application, however, in August 2021, withdrew the withdrawal application.
The plaintiffs asserted that pre-litigation mediation was also attempted by them, but was closed because Defendant 1 failed to attend the mediation sessions. The plaintiff had also placed on record, a customer complaint, wherein the customer had complaint of being confused between the Defendant 1 and the plaintiffs because of the use of a deceptively similar name.
Thus, the plaintiffs had filed the present suit for grant of permanent injunction restraining Defendant 1 from using its registered trade marks.
Analysis, Law, and Decision
The Court relied on Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, 1964 SCC OnLine SC 14 and K.R. Chinna Krishna Chettiar v. Shri Ambal and Co. (1969) 2 SCC 131 and opined that in case of device marks containing the textual matter which constituted a prominent part of the rival device marks, and if the textual matter of the defendant’s mark was confusingly or deceptively similar to the textual matter of the plaintiff’s mark, infringement had necessarily taken place.
The Court opined that it was a matter of common knowledge that a visual appearance of a device marks changed from time to time and a mythical customer of average intelligence and imperfect recollection would remember the textual material in the marks in preference to their visual appearance. The Court noted that in the present case, the textual material, ‘CHEESE BURST’ and ‘PASTA ITLAIANO’ was identical between the plaintiffs and Defendant 1 and opined that mere fact that visually the two marks might be dissimilar could not undermine the infringing nature of Defendant 1’s marks.
The Court opined that mere similarity of the two marks, and the goods and services covered by the parties would not result in infringement under Section
Thus, the Court opined that the phonetic similarity between ‘Domino’s’ and ‘Dominick’s’, combined with the similarity in logos, and good and services provided by the plaintiffs and Defendant 1, rendered the marks deceptively similar to each other. Further, when a customer of average intelligence and imperfect recollection visited ‘Domino’s Pizza’ and later, visited ‘Dominick’s Pizza’, likelihood of confusion was bound to exist and this likelihood would further increase by the manner in which Defendant 1 had chosen to represent its logo.
The Court opined that Defendant 1’s intention of luring the public into believing an association between them and the plaintiffs was apparent as the marks ‘CHEESE BURST’ and ‘PASTA ITLAIANO’ replicated the plaintiff’s mark and the mark 
was throwback to the original predecessor ‘DomiNick’s Pizza’ mark of the plaintiffs adopted by the Monaghan Brothers.
The Court noted that the “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. 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 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.”
Thus, the Court opined that such imitative attempts of the marks related to consumable items should not go unchecked and the present case was the case of infringement by Defendant 1 of the plaintiffs registered trade marks.
The Court relied on Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia 2014 SCC OnLine Del 7687 and granted the decree of permanent injunction restraining Defendant 1 and all others acting for and on its behalf from advertising, selling, offering for sale marketing etc. any product, packaging, menu cards and advertising material, labels, stationery articles, website or any other documentation from using, depicting, displaying in any manner the marks ‘Dominick Pizza’, 
, ‘CHEESE BURST’ and ‘PASTA ITLAIANO’ or any other identical or deceptively similar mark to the plaintiffs’ registered trademarks in any manner whatsoever.
The Court directed Defendant 1 to withdraw an application submitted to the Trade Marks Registry for registration of its 
mark. Further, Defendant 2 was directed to transfer the domain names www.dominickpizza.com and www.dominickpizzas.com to the plaintiff and Defendant 1 was made liable to pay Rs. 6,57, 564.20, the actual costs incurred by the plaintiffs in the present litigation.
[Dominos IP Holder LLC v. Dominick Pizza, 2023 SCC OnLine Del 6135, decided on 26-09-2023]
*Judgment authored by- Justice C. Hari Shankar
Advocates who appeared in this case :
For the Plaintiffs: Pravin Anand, Shantanu Sahay, Imon Roy and Vareesha Irfan, Advocates;
Buy Trade Marks Act, 1999 HERE
