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.
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
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
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.
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
Email: [email protected]
, Ph no: 9990389539