DOMINOS IP HOLDER INC & ANR V MS DOMINICK PIZZA & ANR, 2022

CITATION	CS (COMM) 587/2022
DATE OF JUDGMENT	28th AUGUST 2022
COURT	THE HIGH COURT OF DELHI
APPELLANT	DOMINOS IP HOLDER LLC,JUBILANT FOODWORKS LIMITED
RESPONDENT	M\S DOMINICK PIZZA, GoDaddy
BENCH	PRATHIBA M. SINGH. J.

INTRODUCTION

The case of critical issue in Intellectual Property Right for trademarks which involves legal dispute of trademark right infringement by any person. This suit was initiated under The Trademark Act, 1999 (‘The ACT’) by the Appellant No. 01 “DOMINOS IP HOLDER LLC” and Appellant No. 2 “Jubilant Food Works Limited”, against the Respondent No. 01 “MS DOMINICK PIZZA” in the High Court of Delhi. The main dispute was with reference to use of similar trademark and logo by the respondent in India through its four outlets one in Indirapuram, another in Raj Nagar in Ghaziabad, UP, and one in Nakodar, Mehatpur, Punjab and Respondent No. 2 GoDaddy which is online web-hosting and Domain registration . The disputed trademark was confusing for the public at large due to similar phonetic name and logo by the Respondent No. 01. Herein Appellant No. 01 approached the Hon’ble Court for the permanent injunction on respondents for any use of its trademark “Domino’s Pizza” and its device mark, logo mark, as also the other marks “CHEESE BURST” and “PASTA ITALIANO” by the respondents under “M\S DOMINICK PIZZA”.

FACTS OF THE CASE

1. The Appellant No . 01 is a Limited Liability Corporation (LLC) incorporated and its registered office situated at Michigan, USA. The intellectual property of “Domino’s Pizza, Inc.” including the trademarks “Domino’s Pizza”, which the appellants claimed in this case for protection. Appellant No. 01 also had licensed its trademarks and related intellectual property to “Domino’s Pizza International Franchising Inc.” in 1965 which was purchased in 1960 by Appellant No. 01 from “DomiNick’s Pizza”,  Mr. Dominick DiVarti in Michigan, USA. Appellant No. 02 “Jubilant Food Works Ltd” had Master Franchisees Agreement for India operation. Important to note the trademark IPR was also registered in India also.
2. Indian operation started in 1996 in New Delhi the appellants were operating with more than fifteen Hundred outlets in a total 337 cities in India. Two websites www.jubilantfoodworks.com and www.dominos.co.in were in use for marketing and handling day to day operations. The appellant claims that the mark “Domino’s Pizza”, with the logos, containing faces of a domino, are unique, created, and arbitrary, and that the word “Domino’s” has no etymological significance bearing any relation to the services provided under the said trade mark. By virtue of their being distinctive and arbitrary, the appellants claimed that the mark is eligible to additional intellectual property protection.
3. Respondent No. 01 was in pizza and fast-food services identical to CS(COMM) 587/2022 those of the appellants, under the name “DOMINICK PIZZA” and the logo . Respondent No. 01 has similar trademarks “CHEESE BURST” and “PASTA ITLAIANO” for different varieties of the food items. Respondent was using www.dominickpizza.com and the Facebook page https://www.facebook.com/dominickpizza/?ref=br_rs for marketing business purposes. Respondent had prior knowledge and attempted first for registration of the device mark on 15^th  June 2016, but it was objected. In April 2021, the Respondent No. 01 applied to the Trademark Registry for withdrawal of its trademark application in August 2021, removed the withdrawal letter through another lawyer.

ISSUES RAISED

1. Whether the present suit is maintainable before Hon’ble High Court of Delhi ?
2. Whether Respondent1 and 2  infringed any of trademark rights of the appellant’s trademark originally registered and well-known under “M\S DOMINICK PIZZA”?

CONTENTIONS OF APPEALENT

1. The appellant had submitted facts on record which showcased the mentioned trademark is well known from 1965, also registered in the USA. Trademarks were also registered in India with multiple devices.

Registration Details:

• Appl. No.- 463304, mark:-“DOMINO’S”, Date:-19/11/1986 , Class:30
• Appl. No.-572312, mark:-“DOMINO’S PIZZA”, Date:-30/04/1992, Class:30
• Appl. No.- 1238053, mark:-“DOMINO’S”, Date:-30/04/1992, Class:42
• Appl. No.- 1238054, mark:-“DOMINO’S”, Date:-18/09/2003, Class:30
• Appl. No.- 2145011, mark:- NA, Date:-18/09/2003, Class:39
• Appl. No.-2145001, mark:-“PITZZA MANIA”, Date:-16/05/2011, Class: 29,30,39&43
• Appl. No.- 2145008, mark:-“CHEESE BURST”, Date:-16/05/2011, Class: 29, 30
• Appl No.-2145009, mark:-“PASTA ITALIANO”, Date:-16/05/2011,Class: 29, 30

2. The appellant came with such infringement knowledge in January, 2020 subsequently investigation was made which was available on record dated 5th August, 2022. The Respondent was also registered with online platform Zomato for a food delivery business with alleged infringed trademark.
3. The Respondent not only misused the appellants trademark but it was using appellants dishes and flavours. The online portal showed the orders and deliveries by alleged trademark infringement. Further to that, the reviews and comments by customers show on record, customers were confused with the original trademark of the appellant and the confusion was created by misspellings. This was not only infringement of trade mark rights but also it was causing reputational and financial losses for the appellants.
4. The fair opportunity was given to the Respondent under the Commercial Court Act, 2015, for the mediation Center. But the Respondent never appeared or represented through any of his representatives. Such a report was submitted before the court dated 4th April, 2022.

5. The Learned counsel for the appellant Mr. Anand brought attention of court for similar infringement, that the trade mark “Domino’s Pizza” was protected earlier in cases like Dominos IP Holder LLC & Anr. V. Hominos Pizza, [CS(COMM) 249/2020], and Dominos IP Holder LLC & Anr. Vs. Domi’s Pizza & Ors., [CS(COMM) 614/2019]. Both cases the court verdict was in favour of the appellant and their trademark was protected.
6. Hence the appellant’s contention was they are lawful owners of well-known trademarks and the respondent had been continuing breach of such rights of appellant. 

CONTENTIONS OF REPONDENT

1. The respondents wilfully remained absent for the Mediation Center for any possible solution can be obtained under the Commercial Courts Act, 2015.
2. Neither the respondent himself or through his legal representatives appeared before the Hon’ble Delhi High court during the proceedings.

JUDGEMENT

The Hon’ble Delhi High Court (The Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015) heard the matter in the court of Prathiba M. Singh. J. and concluded the matter on 29 August, 2022 with ad interim order. 

1. As per para 25 of the Order dated 29 August, 2022, the Hon’ble Delhi High Court passed the permanent injunction order against the respondent,

• Respondent No. 01 himself or indirectly through any of his presentative shall not use the aforesaid trademark of the appellant in any activity like marketing, advertisement, sale, offer to sale which involved any such product or any packaging or any other material.
• Physically in retail outlets or in Digital platforms like Zomato or any other platforms.

2. The Respondent No. 02 (GoDaddy) web hosting platform was ordered to remove\stop hosting alleged Domain Names www.dominickpizzas.com & www.dominickpizza.com.
3. Court granted time of two weeks to comply with the order under Civil Procedural Code, 1908, Order XXXIX under Rule 3.

ANALYSIS

1. The Hon’ble High Court reviewed all the facts placed before the Court and the cases cited by the Ld. Council of the appellant. Most important fact was the original brand was a well-known trademark from 1960 also registered in the USA and in India with due process as per the ACT. The Controller General of Patents, Designs and Trade Marks records affirm the registration status with mark “Domino’s Pizza” and its device mark, logo mark, as also the marks “CHEESE BURST” and “PASTA ITALIANO”.
2. The Name of trademark and logo and other marks used by Respondent No. 01 clearly shows there is not only similarity,

• Trademark used by Respondent No. 01 has phonetic as well as partially same words used.
• The logo also has the similarity in Color, shape and just few cosmetic non-visible changes were done.

Considering the above reason’s, there was every possibility for the public at large to have confusion between original registered trade mark and alleged used trademark by respondent.

3. This was simply unethical and unlawful infringement of the intellectual property rights of the appellants by the Respondent for personal business and monetary gain.

CONCLUSION

In conclusion, the case of DOMINOS IP HOLDER INC & ANR V MS DOMINICK PIZZA & ANR, 2022 the court reiterated the lawful intellectual property right of the appellant under the Trademark Act, 1999. In recent times the intellectual property right is equally important and the right of property holders cannot be infringed by anyone. Increasing complexity in business and the businesses working globally across jurisdiction it is very important the individuals are vigilant about their rights and duties. The international World Trade Organization (‘WTO’) in in its Convention in Paris for trade Related aspects of Intellectual Property Rights (i.e. TRIPS) placed an international agreement. The TRIPS has set down framework and  standards for many forms of intellectual property (‘IP’) regulation as applied to all member nations. 

REFERENCES

1. https://indiankanoon.org/
2. https://delhihighcourt.nic.in/ 

This Article is written by Ganesh Narke, student of School of Law, MIT WPU; Intern at Legal Vidhiya.

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