Delhi High Court restrains food outlets from using marks similar to “Domino’s”; directs Zomato, Swiggy to de-list them

Delhi High Court: The present suit was filed seeking permanent injunction restraining infringement of plaintiffs’ trade marks “Domino’s Pizza”, “” and “”, and passing off, etc. Plaintiffs alleged that Defendants 1 to 8 were perpetrating fraud on the public by creating a false association with plaintiffs, resulting in grave financial losses to them. Sanjeev Narula, J., restrained Defendants 1 to 8, and anybody acting on their behalf, from advertising, selling, offering for sale, and marketing any products, packaging, menu cards and advertising material, labels, stationery articles, website or any other documentation using, depicting and/or displaying the impugned marks “Domino”, “Domino’s”, “Dominon”, “Dominox”, “Dominoz”, “Domison”, “Domain’s” and/or any other identical or deceptively similar mark in any manner whatsoever, so as to cause confusion or deception leading to passing off of the said defendants’ products and services as those of plaintiffs, and/or amounting to infringement of plaintiffs’ “Domino’s” trade marks.

Background

Plaintiff 1, Domino’s IP Holder LLC, belonging to the Domino’s pizza group of companies, owned and managed certain intellectual property under the ultimate ownership of Domino’s Pizza, LLC. Plaintiff 2, Jubilant Food Works Limited had exclusive rights to operate Domino’s franchises in India, operating as a single economic entity with Plaintiff 1 for the purpose of protecting intellectual property rights and business under the same in India. Plaintiffs were the first and prior adopter of the mark “Domino’s” since 1965. Plaintiffs had a considerable online presence in India, accepting online orders through their website at the domain name www.dominos.co.in, which was operational since 2007. Further, Plaintiff 2 enlisted their various outlets on online food-ordering platforms such as Defendant 9, Zomato and Defendant 10, Swiggy. Moreover, plaintiffs had acquired statutory rights in their trade marks under the Trade Marks Act, 1999 (‘Act’).

Plaintiffs were aggrieved by Defendants 1 to 8’s unauthorized adoption of identical/deceptively similar trade names and marks being “Domino”, “Domino’s”, “Dominon”, “Dominox”, “Domison”, “Dominoz” and “Domain’s” (‘impugned marks’). The impugned marks were being used to operate imitator brand outlets on online delivery platforms such as Zomato and Swiggy. Defendants were taking unfair advantage of the search results returned upon typing the first string of letters of plaintiffs’ trade name and mark, i.e., ‘DOM’, ‘DOMI’, ‘DOMIN’, and ‘DOMINO’, all of which led to suggestions of the said defendants’ outlets enlisted with Zomato and Swiggy.

Plaintiffs stated that to avoid detection, they were operating their physical outlets under different trade names, such as ‘Pizza Express’ and ‘Open Sky Cafe’. Further, Defendants 1 to 8 were either operated by the same proprietors or share identical FSSAI Numbers, indicating a unified business operation and some of these entities were registered under the “MULTI BRAND KITCHEN” feature offered by Zomato, a platform feature which permitted various brand names to function from a single cloud kitchen location.

Thus, the activities of Defendants 1 to 8 amounted to infringement of plaintiffs’ registered trade marks, and passing off their goods as those of plaintiffs, resulting in dilution of plaintiffs’ trade marks and tarnishment of plaintiffs’ goodwill and reputation. Thus, plaintiffs instituted the present case to safeguard their statutory rights and prevent further misuse of their intellectual property.

Analysis, Law, and Decision

The Court opined that the marks utilized by Defendants 1 to 8 were prima facie identical or deceptively similar to plaintiffs registered “Domino’s” trade marks. The impugned marks not only replicated all the distinctive elements of plaintiffs registered trade marks but were also phonetically, visually, and structurally akin to them. Moreover, these marks were presented in a manner identical to plaintiffs’ brand/trade mark “Domino’s” on the online platforms managed by Zomato and Swiggy. The Court opined that the similarity extended to the use of these marks for identical goods and services, specifically, pizzas and their online delivery, highlighted a systematic effort by Defendants 1 to 8 to mislead the public into believing that there was an affiliation or origin connection with plaintiffs.

The Court observed that these impugned marks were associated with food products, which were widely marketed and consumed across diverse demographic segments, and the potential for misrepresentation carried significant consumer impact. The Court thus held that the actions of Defendants 1 to 8 constituted a clear infringement of plaintiffs’ statutory rights under Section 29 of the Act. Consequently, plaintiffs were justifiably entitled to seek an injunction to restrain defendants from continuing such infringing activities. Additionally, the actions of Defendants 1 to 8 also constituted, prima facie, an act of passing off, strengthening plaintiffs’ case for immediate ad-interim ex-parte injunction to prevent further damage to their brand and consumer trust.

The Court thus passed the following directions:

1. Defendants 1 to 8, and anybody acting on their behalf, were restrained from advertising, selling, offering for sale, and marketing any products, packaging, menu cards and advertising material, labels, stationery articles, website or any other documentation using, depicting and/or displaying the impugned marks “Domino”, “Domino’s”, “Dominon”, “Dominox”, “Dominoz”, “Domison”, “Domain’s” and/or any other identical or deceptively similar mark in any manner whatsoever, so as to cause confusion or deception leading to passing off of the said defendants’ products and services as those of plaintiffs, and/or amounting to infringement of plaintiffs’ “Domino’s” trade marks.

2. Defendants 1 to 8, and anybody acting on their behalf, were restrained from dealing in the impugned marks “Domino”, “Domino’s”, “Dominon”, “Dominox”, “Dominoz”, “Domison”, “Domain’s” and/or any other identical or deceptively similar mark to plaintiff’s registered “Domino’s” trade marks in any manner whatsoever, so as to cause dilution or tarnishment of plaintiff’s trade mark and packaging.

3. Defendants 9 and 10 were directed to de-list, takedown and suspend from their mobile applications, websites and/or any other platforms, the impugned listings.

The matter would next be listed on 11-9-2024.

[Dominos IP Holder LLC v. Ms Domino Pizza, 2024 SCC OnLine Del 2593, Order dated 9-4-2024]

Advocates who appeared in this case :

For the Plaintiffs: Shantanu Anand, Imon Roy, Pratyush Acharya, Advocates

Buy Trade Marks Act, 1999   HERE