The case at hand revolves around a critical legal question: whether competing trademarks, specifically those of the plaintiff, Domino's Pizza, and the defendant, DomiNick's Pizza, are misleadingly similar. This article provides a detailed analysis of the case, exploring the plaintiff's claims, the defendant's actions, and the court's decision, while also examining the role of the court in making such determinations.

Background:
The plaintiff, Domino's Pizza, asserts ownership rights over the Domino's Pizza trademark, dating back to 1965. This lawsuit was initiated by the plaintiff against the defendants for their use of the DomiNick's Pizza trademark. Moreover, the defendants have imitated the plaintiff's registered trademarks, "CHEESE BURST" and "PASTA ITLAIANO," for other culinary items they offer. Both parties operate in the pizza and fast food industries, adding complexity to the case.

The factual Context:
The plaintiff claims to have registered several trademarks in India as early as 1986. Domino's Pizza entered the Indian market in 1996, opening its inaugural restaurant in New Delhi. According to the plaintiff's assertions, they commenced business operations in India at that time and expanded rapidly, reaching 1,567 locations across more than 337 cities in the country by the time the lawsuit was filed.

The Court's eye is determinative of confusion Test:

The core issue before the honorable court is whether the trademarks employed by both parties, Domino's Pizza and DomiNick's Pizza, are likely to mislead consumers. Notably, "the court articulated a significant observation in response to this question: the determination of whether the defendant's mark causes confusion rests within the subjective discretion of the court and should not rely on customer evidence."

Intent to Replicate:
The plaintiff argued that the defendant's use of their trademarks for "CHEESE BURST" and "PASTA ITLAIANO" serves as evidence of an intent to replicate the plaintiff's branding. In support of this argument, the court referred to a well-established legal principle articulated by Lord Justice Lindley in the case of Slazenger & Sons Vs. Feltham & Co (1889) 6 RPC 531, which is as under:

"One must exercise one's common sense, and, if you are driven to the conclusion that what is intended to be done is to deceive if possible, I do not think it is stretching the imagination very much to credit the man with occasional success or possible success. Why should we be astute to say that he cannot succeed in doing that which he is straining every nerve to do?"

This principle emphasizes the importance of exercising common sense and recognizing an intent to deceive, even if success is not guaranteed. Essentially, if a party is actively attempting to deceive, it should not be assumed incapable of achieving its goal.

The Court's Verdict:
Relying on the aforementioned established legal principle and the clear evidence of the defendant's intent to copy the plaintiff's trademarks, the court ruled in favor of the plaintiff, Domino's Pizza. The court found the defendant, DomiNick's Pizza, guilty of violating the plaintiff's registered trademarks.

The Concluding Note:
The Hon'ble Court decreed the suit after observing the aforementioned well-established legal principle and finding the defendants guilty of violating the plaintiff's registered trademarks.The case of Domino's Pizza vs. DomiNick's Pizza highlights the vital role of the court in determining trademark similarity and protecting intellectual property rights.

Case Law Discussed:
Case Title: Dominos IP Holder Llc & Anr. vs Ms Dominick Pizza
Date of Judgement:26/09/2023
Case No. CS. No.587 of 2022
Neutral Citation No:2023:DHC:7126
Name of Hon'ble Court: High Court of Delhi
Name of Hon'ble Judge: C Hari Shankar , H J.

Disclaimer:
Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539