A Slice Of Justice: Delhi High Court Grants Injunction In Favor Of Domino's
A Slice Of Justice: Delhi High Court Grants Injunction In Favor Of Domino's
Introduction
The Delhi High Court presided by a bench of Justice Saurabh Banerjee delivered an order in the case of Domino's IP Holder LLC & Anr. v. M/S. Domnic's Pizza & Ors., addressing key issues of trademark infringement and passing off. The finding illustrates the court's devotion to safeguarding intellectual property rights, particularly in circumstances where earlier use and adoption of a trademark is important.
Factual Background
The plaintiffs, Domino's IP Holder LLC and Jubilant Food Works Limited, are part of the Domino's Pizza group of companies. The plaintiff no.1 owns and manages intellectual property of Domino's Pizza LLC, while the plaintiff no.2 has the exclusive rights to operate Domino's franchises under a Master Franchise Agreement in India.
Procedural Background
The plaintiffs sought grant of permanent injunction restraining the defendants from infringement of trademark, passing off, dilution, tarnishment, and damages against the defendants. The defendants, including online food aggregators Zomato and Swiggy, were alleged to have unauthorizedly adopted trade names/marks similar to the plaintiffs' registered trademarks.
Issues Involved
1. Trademark Infringement: Whether the defendants' adoption of marks such as "Domnic's", "Dominic", "Dominic's", "Domnik", "Daminic", "Daminic's" constitute trademark infringement.
2. Passing Off: Whether the defendants' actions amount to passing off their goods and services as those of the plaintiffs.
Contentions of the Parties
Plaintiffs' Contentions: The plaintiffs argued that the defendants' adoption of the impugned marks is dishonest and intended to deceive consumers and divert the plaintiffs' customers to their establishments. The plaintiffs emphasized their prior adoption and use of the trademark "DOMINO'S" and its registration in numerous jurisdictions across the world.
Defendants' Contentions: The defendant no.17, Swiggy, appeared before the court and accepted notice. However, the other defendants did not appear to contest the suit.
Reasoning and Analysis
The court undertook a thorough examination of the competing marks and determined that the defendants' marks are deceptively similar and phonetically identical to the plaintiffs' registered trademarks and former trade name "Dominick's Pizza". The court found that the defendants had either completely duplicated the plaintiffs' mark or made slight changes to get near to the plaintiffs' trademarks and capitalize on its goodwill.
Final Decision
The Delhi High Court granted an ex parte ad interim injunction in favor of the plaintiffs, restraining the defendants, their proprietors, partners, directors, officers, servants, agents, franchisers, and all others acting for and on their behalf from:
- Using the marks/names "Domnic's", "Dominic", "Dominic's", "Domnik", "Daminic", "Daminic's" or any other identical/deceptively similar mark.
- 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 the impugned marks.
The court also directed the defendant nos.16 and 17 (Zomato and Swiggy) to delist, take down, and suspend the impugned listings from their mobile applications, websites, and/or any other platform. The court has directed the matter to be listed on 17 September, 2025.
Law Settled
The judgment portrays the court's commitment to protecting intellectual property rights, particularly in cases where prior adoption and use of a trademark are crucial. The court's decision emphasizes the importance of maintaining distinct and non-confusing trademarks to safeguard the interests of the prior adopter and user.
In this case the plaintiff was represented by Mr. Shantanu Sahay, Ms. Imon Roy and Ms. Vareesha Irfan, Advocates. Meanwhile the defendant was represented by Mr. Abhay Pratap Singh and Ms. Mitali Umat, Advocates. for D-17.
