The Delhi High Court has recently issued a permanent injunction, prohibiting a pizza outlet located in Ghaziabad from using the name 'Dominick Pizza.' The action was taken as it was deemed to be a trademark infringement, infringing upon the established trademark of the multinational pizza chain, Domino's Pizza.

Justice C Hari Shankar determined that 'Domino's Pizza' and 'Dominick's Pizza' were phonetically similar, meaning they sounded alike, and as a result, he concluded that the marks were deceptively similar.

The judge elaborated that there was a strong possibility of confusion occurring among customers when they visit both the Domino's outlet and the Dominick's Pizza outlet, especially if they have average intelligence and an imperfect memory.

The Court also noted that the likelihood of confusion would be intensified by the way Defendant 1 (Dominick's) has chosen to present its logo, which is in a square format and utilizes lettering similar to that used by the plaintiffs (Domino's).

The judge also stressed the need for courts to be watchful in preventing imitative actions, especially in trademark matters related to consumable goods or restaurants. The Court stated that when it comes to trademarks associated with food products or establishments that serve food, a greater level of care and caution is anticipated.

The Court was presiding over a trademark infringement lawsuit initiated by Domino's against Dominick Pizza. The lawsuit alleged that Dominick Pizza was using an identical name and had also utilized registered trademarks like 'Cheese Burst' and 'Pasta Italiano.'

In August 2022, the Court issued an ex parte interim order against Dominick Pizza.

In the final order, Justice Shankar also noted that operating a restaurant with a mark that closely resembles a well-known mark does not reflect positively on the integrity of the business.

The court stated, “the intent to capitalize 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.”

Furthermore, it was noted that determining whether an infringing mark is likely to cause confusion is fundamentally a matter within the subjective discretion of the Court. The Court emphasized that this determination should not rely on evidence from customers but rather on the Court's judgment and interpretation of the situation.

Ultimately, the Court ruled in favor of Domino's Pizza, finding that Dominick Pizza had indeed infringed upon Domino's Pizza's trademark. Consequently, the Court ordered Dominick Pizza to cease using the name and the trademarks 'Cheese Burst' and 'Pasta Italiano.'

Additionally, the Court ordered Dominick Pizza to withdraw its application from the Trade Marks Registry for the registration of this mark and transfer its internet domain names to Domino's.

Case: Dominos IP Holder LLC & Anr v Ms Dominick Pizza & Anr, CS(COMM) 587/2022.