The Hon'ble Delhi High Court in Dominos IP Holder LLC & Anr. v. M/s MG Foods & Anr., CS(COMM) 517/2024 and other connected IAs, dated May 31, 2024, granted an ex-parte ad-interim injunction restraining the Defendants from using the mark "DONITO's" or any other mark deceptively similar to the Plaintiffs' registered trademarks "DOMINO'S" and "DOMINO'S PIZZA" for selling identical goods such as pizzas and burgers.
Facts of the Case:
Plaintiff No. 1, Domino's IP Holder LLC, belonging to the Domino's pizza group of companies, owns and manages certain intellectual property under the ultimate ownership of Domino's Pizza, LLC. Plaintiff No. 2, Jubilant Food Works Limited, has exclusive rights to operate Domino's franchises in India, operating as a single economic entity with Plaintiff No. 1 for the purpose of protecting intellectual property rights and business in India.
The Plaintiffs are the first and prior adopter of the mark "DOMINO'S" since 1965 and now conduct operations in more than 90 countries, with over 20,500 stores. The Plaintiffs' initial adoption of the said mark is arbitrary, as it has no meaning or significance in relation to pizza or fast food restaurants, and thus it is distinctive and exclusively associated with the Plaintiffs and their goods. Consequently, on account of their extensive and continuous use, the Plaintiffs' trademarks have acquired immense goodwill and reputation, as demonstrated by the Plaintiffs' revenue and promotional expenses.
Plaintiff No. 2 runs 1,928 Domino's Pizza outlets in over 407 cities in India, which is the Plaintiffs' biggest market outside of the United States of America. Plaintiffs have a considerable online presence in India, accepting online orders through their website at the domain name www.dominos.co.in, which has been operational since 2007. Further, Plaintiff No. 2 has enlisted their various outlets on online food-ordering platforms such as Defendant No. 14, Zomato, and Defendant No. 15, Swiggy. Moreover, Plaintiffs have acquired statutory rights in their trademarks under the Trade Marks Act, 1999, details of which have been provided in the order.
The Plaintiffs are aggrieved by Defendant No. 1, who is operating six outlets in various regions of Punjab, using a phonetically and visually deceptively similar mark "DONITO'S" for selling identical goods, i.e., pizzas and burgers. The Plaintiffs acquired knowledge of the use of the impugned marks in April 2024 through a YouTube video linking the Plaintiffs' #DOMINOS with the Defendant's #DONITOS.
A perusal of the record shows that Defendant No. 1 has applied for the registration of the impugned mark "DONITO'S" and the device mark under application No. 5208690 under Class 30, which has been "accepted and advertised." While the Plaintiffs reserve the right to oppose the application, they sought a restraint order.
Aggrieved by the unauthorized use of their marks by the Defendants, the Plaintiffs approached the Delhi High Court seeking permanent injunction and other reliefs under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, to protect their statutory and common law rights in their trademarks.
Issue:
Whether the Defendants should be restrained from using the mark "DONITO's" or any other mark deceptively similar to the Plaintiffs' registered trademarks "DOMINO'S" and "DOMINO'S PIZZA" for selling identical goods such as pizzas and burgers?
Held by the Court:
The Court was satisfied that the Plaintiffs had made out a prima facie case for the grant of an ex-parte ad-interim injunction till the next date of hearing. The balance of convenience lay in favor of the Plaintiffs, and they were likely to suffer irreparable harm if the injunction was not granted.
The Court granted an ex-parte ad-interim injunction in favor of the Plaintiffs and against the Defendants, restraining Defendant No. 1 and all those acting on their behalf from advertising, promoting, selling, marketing, or packaging any product, i.e., pizzas and burgers, using the impugned device marks or any other mark identical or deceptively similar to the Plaintiffs' registered trademarks.
The Court specifically directed Defendant No. 1 to take down all references to the impugned device marks in respect of pizzas and burgers from their domain www.donito's.in within a period of one week.
The Court permitted the Plaintiffs to address communications to social media platforms, along with a copy of the Court's order, indicating the particular infringing listings of the Defendant's products, which have been tabulated in the order. Upon receiving the communication, the platforms were directed to take down the listings within 72 hours and confirm the same to the Plaintiffs.
The Court directed the Defendant Nos. 14 and 15 (Zomato and Swiggy) to file compliance affidavits in respect of the takedown within four weeks, with copies to the opposing side.
Domino's trademark infringement
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