[Trademark Infringement] Higher Degree Of Caution Required Where Marks Pertain To Food Items Or Eateries: Delhi High Court

The Delhi High Court has observed that where the trademarks in a suit pertain to food items or eateries where food items are served, a “higher degree of care and caution” is to be observed.

Observing that running an eating house using a mark which is deceptively similar to a reputed mark does not speak well for the enterprise concerned, Justice C Hari Shankar said:

“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. 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.”

The court made the observations while permanently injuncting an eatery Dominick Pizza in a trademark infringement suit filed by Domino’s.

Justice Shankar restrained Dominick Pizza from advertising, selling or marketing any product, packaging, menu cards and advertising material using the marks “Dominick Pizza”, “CHEESE BURST” and “PASTA ITLAIANO” or any other mark identical or deceptively similar to Domino’s.

The court directed Dominick Pizza to pay Rs. 6,57,564.20 to Domino’s.

“Defendant 2 is directed to transfer, forthwith, the domain names www.dominickpizza.com and www.dominickpizzas.com to the plaintiff,” the court added.

The court observed that Domino’s Pizza” and “Dominick’s Pizza” were ex facie deceptively similar to each other and that the matter has to be viewed from the perspective of a customer of average intelligence and imperfect recollection, who is not over-familiar with one or the other.

“If such a customer visits a “Domino’s Pizza” outlet of the plaintiff on one occasion and, sometime later, visits a “Dominick’s Pizza” outlet of Defendant 1, likelihood of confusion is bound to exist. This likelihood would be exacerbated by the manner in which Defendant 1 has chosen to represent its logo, in a square format using lettering similar to that used by the plaintiffs,” the court said.

It added: “Viewed thus, the phonetic similarity between “Domino’s” and “Dominick’s”, in conjunction with the similarity in the logos used by the plaintiffs and Defendant 1, and the fact that they are providing identical goods and services under the respective marks, in my considered opinion, render the marks deceptively similar to each other and clearly make out a case of likelihood of confusion between the two marks.”

Domino's sought injunction against Dominick Pizza, having three outlets i.e., two at Ghaziabad, Uttar Pradesh (at Indirapuram and Raj Nagar Extension) and third in Punjab.

Domino's sought protection of its mark 'Domino's Pizza', and the accompanying device mark, logo mark, as also the marks 'Cheese Burst' and 'Pasta Italiano'.

Last year, a coordinate bench had granted ex-parte ad interim injunction in favour of Domino's and restrained Dominick Pizza from advertising, selling or marketing any product or any documentation using or displaying the impugned marks 'Dominick Pizza', 'Cheese Burst' and 'Pasta Italiano'.

Advocates Pravin Anand, Shantanu Sahay,.

Imon Roy and Vareesha Irfan appeared for the plaintiffs.

None appeared for defendants.

Title: DOMINOS IP HOLDER LLC & ANR. v. MS DOMINICK PIZZA & ANR.

Citation: 2023 LiveLaw (Del) 919

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