Equivalent citations: CS (COMM) 587/2022
Bench: JUSTICE PRATHIBA M. SINGH
Date of Order: 29.08.2022
Petitioner: DOMINOS IP HOLDER LLC & ANR.
Respondent: MS DOMINICK PIZZA & ANR.
The facts of the case state that Dominos IP Holder LLC, popularly known as Dominos (‘plaintiff’) was striving for protection of the mark ‘Domino’s Pizza’, and the accompanying device mark, logo mark, as well as the marks ‘Cheese Burst’ and ‘Pasta Italiano’, which are its popular dishes and 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’.
The interesting point to ponder over here is the fact 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, 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. The defendants have several outlets including Ghaziabad and Punjab’s Jalandhar with several advertisements and sale of products under the plaintiff’s marks.
Advocates for the Plaintiffs specified that they also gave a notice for pre-litigation mediation, which has evoked no response from the Defendants and thus, the Delhi High Court Mediation and Conciliation Centre (hereinafter “Mediation Centre”), has ended the conciliation proceedings as a “non-starter”, vide Conciliation Report dated 4th April, 2022
CONTENTIONS OF THE COURT
A perusal of the record shows that the Defendants have used the name ‘Dominick Pizza’, which is nothing but the identical historical name of the Plaintiff’s store.
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 flavor variants of the Plaintiffs, such as ‘Cheese Burst’ and ‘Pasta Italiano’. One of the reviews which have been given by a customer on Google, which has been placed on record, shows clearly that there is complete confusion being caused.
Upon hearing the ld. Counsel for the Plaintiffs and perusing the record, it is clear that the competing marks are deceptive and imitative of each other.
ORDER OF THE COURT
As per the facts and circumstances of this matter, the Plaintiffs have made out a prima facie case in their favor for the grant of an ex-parte ad interim injunction. The balance of convenience lies in favor of the Plaintiffs, and irreparable injury would be caused if the injunction is not granted.
Thus Defendant No.1, its proprietors, partners, directors, officers, servants, agents, franchisers, and all others acting for and on its behalf, 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, till the next date of hearing.
Defendant No.2 – GoDaddy is concerned, it is directed to block/suspend Defendant No. 1’s domain names, www.dominickpizza.com and www.dominickpizzas.com.