Domino’s IP Holder LLC, Jubilant Food Works Limited, who have exclusive rights to operate Domino’s franchises in India, have filed a suit against M/S MG Foods & ANR for using the mark “DONITO’s” which is identical or deceptively similar to the plaintiffs’ registered trademarks.
The plaintiffs stated that they have exclusive rights to the “DOMINO’S” trademark, which has been in use since 1965 and is widely recognized globally therefore a Well-Known that to including 1,928 outlets in India. They argue use of the mark “DONITO’S” for selling pizzas and burgers in Punjab is phonetically and visually similar to their trademark, thus constituting infringement. The discovery of this infringement was done by plaintiff on April 2024, highlighting their extensive goodwill, reputation, and statutory rights under the Trade Marks Act, 1999. The initial demand by Domino’s was an injunction to prevent further damage and consumer confusion, arguing that the balance of convenience and the likelihood of irreparable harm justify immediate relief.
“DONITO’S” was applied for registration of the impugned mark under Class 30, which has been “accepted and advertised.” “Domino’s” reserves the right to oppose this application and seek a restraint order to prevent further infringement and damage to their brand.
The Delhi High Court has issued specific directions in the case, providing interim injunction relief to the plaintiff, restraining M/S MG Food from promoting, selling, marketing, or packaging any products under the “DONITO’s” mark or any deceptively similar mark to “DOMINO’S.” Additionally, M/S MG Foods & ANR is ordered to remove all references to the “DONITO’s” mark from their domain within one week. Domino’s are authorized to communicate with social media platforms to take down infringing listings within 72 hours, with confirmation to be sent to the plaintiffs. Plaintiffs must serve notice to the defendants through all authorized modes, with proof of service to be recorded before the next hearing. DONITO’S are required to file their reply within eight weeks, while Domino’s may file a rejoinder if desired. Compliance with Order XXXIX Rule 3 of the CPC must be completed within one week. The next hearing for the case is scheduled for October 15, 2024.
Note: order 39 rule 3 of CPC is referred in the case:
Order XXXIX– “TEMPORARY INJUNCTIONS AND INTERLOCUTORY ORDERS Temporary injunctions”.[1]
Before granting an injunction, the Court must generally notify the opposite party unless doing so defeats the purpose of the injunction. If the Court decides to grant the injunction without prior notice, it must record its reasons and require the applicant to immediately deliver or send by registered post copies of the application, supporting affidavit, plaint, and any supporting documents to the opposite party. Additionally, the applicant must file an affidavit on the day of the injunction or the next day, confirming that these copies have been sent.
The Delhi High Court has slammed the gavel on “DONITO’S”, putting a halt to their promotion, sale, and marketing under the “DONITO’s” mark. The interim injunction, while not a final determination on the merits, provides significant immediate relief to Domino’s. It will be crucial to monitor how DONITO’s responds and whether any novel legal arguments emerge in their defense. The final judgment could potentially reshape the landscape of trademark protection in India’s burgeoning food service sector.
As the case progresses towards its next hearing on October 15, 2024, both parties will need to prepare robust arguments. For DONITO’s, this may involve demonstrating how their mark is sufficiently distinct or arguing against Domino’s claim of a well-known trademark status. For Domino’s, solidifying their position as a well-known mark and providing evidence of actual or likely consumer confusion will be key
[1] Order 39 rule 7 of CPC.
