TRADEMARK BATTLE: DOMINO’S FACES OFF AGAINST DONITO’S IN THE BATTLE OF LOGOS

INTRODUCTION

Recently, Domino’s India filed a trademark infringement case in the Delhi High Court against a food outlet in Punjab using the name “Donito’s,” which closely resembles Domino’s. This outlet also sells similar products like pizzas and burgers. The case came to light in April 2024, following a YouTube video comparing the two brands. Domino’s sought interim relief, and on 31/05/2024, the court granted an interim injunction in favor of Domino’s. This article discusses the trademark dispute, relevant laws, and previous related cases.

FACTS OF THE CASE

In the present case, the plaintiff seeks a permanent injunction against the defendant. The defendant’s trademark “DONITO’S” is phonetically and visually similar to the plaintiff’s trademark “DOMINO’S” and they are operating in the same market. The plaintiff has acquired the statutory rights in their trademark under the Trademark Act, 1999.

PARTIES INVOLVED:

  • Plaintiffs: Dominos IP Holder LLC & Jubilant Food Works Limited
  • Defendants: M/S MG Foods & Anr.

FACT IN ISSUE:

  • Whether “DONITO’S” is similar enough to “DOMINO’S” to constitute infringement under the Trade Marks Act, 1999.
  • Whether the Defendants’ use of similar marks creates a false association with the Plaintiffs’ brand, causing confusion among consumers and harming the Plaintiffs’ reputation.
  • Whether the Plaintiffs have established a strong enough case to warrant an immediate injunction against the Defendants’ use of the allegedly infringing marks.

LEGAL ARGUMENT:

PLAINTIFF:

The plaintiffs contended that the defendants’ use of “Donito’s” may mislead consumers into believing there is a connection between the two businesses. The plaintiffs claim that it violates their registered trademarks and amounts to passing off.

DEFENDANT:

The defendants contended that “Donito’s” and “Domino’s” are different and do not confuse customers. They may argue that the plaintiffs’ brand is not diminished by the use of their mark, which is done in good faith.

THE LATEST ORDER:

In the latest order given by the court on 31/05/2024, the court observed that the plaintiff has made out a prima facie case for the grant of an ex parte ad interim injunction. Until the next hearing, an injunction is granted in favor of the plaintiff, and the court ordered the defendant to take down all references to the device marks within one week.

UNDERSTANDING TERMS

Trademark: A trademark is a unique word, symbol, logo, or phrase that identifies a company’s products or services, distinguishing them from others. According to Section 2 (ZB) of the Trademark Act, 1999, a trademark is a mark capable of being represented graphically and distinguishing goods or services of one person from those of others.

Trademark Infringement: Trademark infringement means unauthorized use of any trademark or service mark, which creates confusion, deception or misunderstanding among the customers about the actual company or product or service.

Injunction: In trademark cases, interim injunctions are crucial. Under Order 39 Rules 1 & 2 of the Civil Procedure Code, parties can seek interim relief if:

  • There is a prima facie case.
  • The balance of convenience favors the plaintiff.
  • Irreparable damage would occur without the injunction.

RECENT CASE LAWS RELATED TO TRADEMARK INFRINGEMENT

Trademark infringement occurs frequently due to the vast number of brands and the possibility of someone using a similar trademark. Here are some cases related to trademark infringement filed in recent years:

1.     M/S Maheshwari Tea Company Pvt. Ltd. v. M/S Vijay Agencies (2015)

The appellant filed a civil suit against the defendant for using a similar trademark. The appellant adopted the trademark “MAHESHWARI” in 1961, while the defendant started using “MALESHAWARI” in 2014, leading to customer confusion. The court held that the defendant’s trademark was phonetically and visually similar to the appellant’s and ordered the defendant not to use a deceptively similar trademark.

2.     Triumphant Institute of Management vs. Times Coaching Centre (2022)

The plaintiff sought an injunction against the defendant for using a deceptively similar trademark. The plaintiff, operating since 1992, used the trademark “T.I.M.E – Triumphant Institute of Management Education.” The defendant used “TIMES COACHING INSTITUTE” in the same market. The court observed that the plaintiff established a prima facie case of infringement and granted the injunction, along with a fine of Rs. 20,000 payable by the defendant.

3.     Domino’s IP Holder LLC & Anr. v. M/S Dominick Pizza & Anr. (2022)

The plaintiff sought a permanent injunction against the defendant for using a deceptively similar trademark, logo, and marks like “DOMINICK PIZZA” and other registered trademarks like “Cheese Burst” and “Pasta Italiano.” The court granted an ex parte ad-interim injunction in favor of the plaintiff.

CONCLUSION

In conclusion, the above-mentioned cases, laws, and other content clearly show that using similar trademarks leads to trademark infringement. The plaintiff has the right to seek an injunction in their favor. Similarity can be phonetically, visually, or by any means that confuse the consumer of that product. In the case of “DOMINO’S” v. “DONITO’S,” the trademark is phonetically and visually similar, and the court ordered in favor of “DOMINO’S.”

AUTHOR: Ms. Pragati Tomar, pursuing B.A. LL.B. from Prestige Law College, Gwalior

REFERENCES

  • CS(COMM)517/2024
  • B. CIVIL MISC. APPEAL NO. 1797/2015
  • CS (COMM)60/2021
  • CS(COMM)587/2022
  • CS(COMM)517/2024