The Delhi High Court recently granted a permanent injunction, prohibiting a Pizza outlet based in Ghaziabad from using the name ‘Dominick Pizza,’ as it infringe upon the trademark of the multinational pizzeria giant, Domino’s Pizza.
Justice C Hari Shankar determined that ‘Domino’s Pizza’ and ‘Dominick’s Pizza’ were phonetically similar, making the marks deceptively similar. The judge highlighted the potential for confusion, especially if a customer of average intelligence and imperfect recollection were to visit both the Domino’s and Dominick’s Pizza outlets.
The court emphasised the need for vigilance, particularly in trademarks related to consumable items or eateries. It stated that a higher degree of care and caution is expected when the marks pertain to food items or eateries.
The trademark infringement suit was filed by Domino’s against Dominick Pizza, citing the use of an identical name and the incorporation of registered trademarks like ‘Cheese Burst’ and ‘Pasta Italiano.’ An interim order was issued against Dominick Pizza in August 2022.
In the final order, Justice Shankar noted that operating an eating house with a mark deceptively similar to a well-known mark reflects poorly on the enterprise. The court expressed that the intention to capitalise on the reputation of an established brand through a deceptively similar mark could lead to a legitimate concern about a compromise in quality by the imitator.
Regarding the likelihood of confusion, the court stated that it is a matter within the subjective discretion of the court and not solely determined by customer evidence.
The court concluded that Dominick Pizza had clearly infringed on Domino’s Pizza’s trademark. Dominick Pizza was restrained from using the name and the trademarks ‘Cheese Burst’ and ‘Pasta Italiano.’ The court also ordered Dominick Pizza to withdraw its application from the Trade Marks Registry and transfer its internet domain names to Domino’s.
