In the recent case of Dominos IP Holders LLC & Anr. V. M/s Dominic Pizza & Ors, the Delhi High Court issued an ex parte ad interim injunction, restraining 13 Defendants from using identical/deceptively similar marks of Plaintiffs and further ordering Defendant Nos. 14 Zomato and Defendant No. 15 Swiggy to take down the weblinks, which were listed on the websites of Defendant Nos. 14 and 15, to operate brand outlets, selling similar products like pizza, etc.
Background:
Plaintiff No. 1 belongs to Domino Group of Companies, which manages the intellectual property rights of Pizza Group of Companies and 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 under the same in India.
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 the year 2007. Plaintiffs are the first and prior adopters of the mark “Domino’s” since the year 1965, conducting operations in more than 90 countries. Out of various registrations, the earliest registration of the word “DOMINOS” is vide Registration No. 463304, which dates back to November 19th, 1986.
Plaintiffs are aggrieved by unauthorised use/adoption of identical/deceptively similar trademarks/tradenames in the form of the following marks, such as “Dominic Pizza”, “Dominek’s Pizza”, “Dominek Pizza”, “Domics Pizza”, “Dominick Pizza”, “Domnick Pizza”, “Dominic’s Pizza”, “Dominics Pizza”, “Dominic’s Pizza”, “Dominik Pizza”, “Domnik Pizza” (hereinafter referred to as “the impugned marks”) Plaintiffs pointed out that Defendants had taken an unfair advantage of the search results which are returned upon typing the first string of letters of Plaintiffs’ tradename and mark ‘DOM’, ‘DOMI’, ‘DOMIN’, and ‘DOMINO’, all of which led to suggestions of Defendants’ outlets enlisted on the platforms of Defendant nos. 14 and 15. Plaintiffs also pointed out the instances of consumer confusion wherein consumers made complaints about the products that were supplied by Defendant Nos. 1 to 13, which were orders on the belief that they were ordered from Plaintiffs.
Analysis:
After considering the above, the court passed an order of ex parte ad interim injunction, restraining Defendant Nos. 1 to 13 from using their impugned marks. The injunction order will come into effect w.e.f. June 1st, 2024. The directions were given in order to allow Defendants to change their names/tradenames/trademarks as soon as possible, but not later than June 1st, 2024.
Conclusion:
The present order reflects the significant importance of how business owners are vigilant nowadays, particularly regarding their brand protection and safeguarding their reputation. Not only does such brand protection help maintain your reputation, but it also plays a pivotal role in maintaining a healthy competitive edge in the market. More particularly, in today’s era, with the advancement of technology and changing landscape, brand owners must adopt efficient strategies, more particularly in the form of strict due diligence and compliance, in order to prevent themselves from such illegal and unlawful activities. Efficient and effective brand protection and management not only helps a business maintain its consistency but also helps create loyalty and trust among consumers.
Authors: Manisha Singh and Siddharth Pandey
First Published By: Lexology here