Introduction
On September 26, 2023, the Delhi High Court handed down a permanent injunction against a pizza outlet located in Ghaziabad. This injunction prohibits the use of the trademark ‘Dominick Pizza’ as it was deemed to infringe upon the trademark of the multinational pizzeria giant, Domino’s Pizza, in the case of Domino’s IP Holder LLC & Anr v M/s Dominick Pizza & Anr. Justice C. Hari Shankar, in his ruling, observed that ‘Domino’s Pizza’ and ‘Dominick’s Pizza’ were strikingly similar in phonetics, and therefore, he concluded that the marks were deceptively similar. This judgment calls for an analysis of the aspect of visual and phonetically deceptive similarity between marks, especially in the context of their usage for consumer items.
A Slice of the Facts
Last year, in September 2022, a coordinated bench took a decisive step by granting an ex-parte ad interim injunction in favor of Domino’s. This injunction forbade Dominick Pizza from promoting, selling, or marketing any product bearing the disputed trademarks, namely, ‘Dominick Pizza,’ ‘Cheese Burst,’ and ‘Pasta Italiano.’
Domino’s subsequently initiated a legal action, seeking a permanent injunction against Dominick Pizza. The aim was to prevent them from operating under the name “Dominick Pizza” or any other mark that closely resembled Domino’s trademark, “Domino’s Pizza.” This also encompassed the trademarks “Cheese Burst” and “Pasta Italiano.”
Dominick Pizza provided services in the pizza and fast-food sector, mirroring the offerings of Domino’s. They used Domino’s name and logo and replicated Domino’s registered trademarks for their various food items as aforementioned.
Domino’s asserted that its logo was distinctive, featuring a unique design with domino faces, a coined element. They also alleged that Dominick Pizza was franchising its business, with outlets spreading to Ghaziabad, Noida, Delhi, and several locations in Punjab.
Bite-Size Insights Into What the Court Held
The Court noted that “Domino’s Pizza” and “Dominick’s Pizza” appeared to be deceptively similar to an average customer with imperfect recollection who is not overly familiar with either brand. The Court based its reasoning on the following:
1. Deceptively and Confusingly Similar
Dominick Pizza clearly copied the marks “Cheese Burst” and “Pasta Itlaiano,” even though they may not be identical as device marks. The Court cited the principle established in K.R. Chinna Krishna Chettiar v. Shri Ambal and Co., stating that when the contextual elements between two marks are deceptively and confusingly similar, the presence of different and distinct visual elements in the two marks would not negate the infringement. The Court emphasized that using a mark deceptively similar to an established brand with the intent to benefit from its reputation can raise concerns about quality compromise, commenting that: “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 also asserted that the determination of whether an infringing mark is likely to cause confusion is a subjective matter for the Court to decide, not based on customer evidence.
2. Phonetic Similarity
Applying the Pianotist Test, the Court found that “Domino’s Pizza” and “Dominick’s Pizza” are phonetically similar, and since their goods and services are identical to those of the plaintiff, this would result in a “likelihood of confusion” among the public. The Court argued that the impugned mark appears to be a reference to the plaintiff’s original “DOMINICK’s PIZZA” mark, further suggesting an intention to create an association between Dominick Pizza and the plaintiff. The Court highlighted that this likelihood of confusion would be heightened by Dominick Pizza’s use of a logo format similar to that of the plaintiff. The Court commented in this context: “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,” and “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.”
3. Higher Caution with Edibles
Given that the marks in question pertain to food items and eateries where food items are served, the Court emphasized the need for a higher degree of care and caution. It expressed concern that operating an eatery with a mark deceptively similar to a reputable one reflects poorly on the enterprise. The Court stressed that imitative attempts in the food industry, including hotels, restaurants, and eateries serving consumable items, should be closely monitored to prevent unchecked use of such marks. The Court concluded that a higher level of care and caution is expected in cases involving food items and eateries, remarking: “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.”
Differentiating Chalk and Cheese: Court’s Final Say on the Matter
The Court found Dominick Pizza guilty of infringement and passing off and consequently ruled in favor of the plaintiff with the following judgments. The Court ordered the immediate transfer of the two disputed domain names to the plaintiff and the withdrawal of the application for the contested mark. Additionally, the Court imposed a cost of ₹ 6,57,564.20 on Dominick Pizza, which will be paid to the plaintiff within four weeks. Furthermore, the Court directed the prompt transfer of the domain names www.dominickpizza.com and www.dominickpizzas.com to the plaintiff.
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