Donito's v/s. Domino's

 

Summary of the Case

The Delhi High Court recently restrained a Punjab-based food chain, "Donito's," from using a name that is phonetically and visually similar to the trademark of Domino's Pizza. The court's decision was based on the claim by Domino's Pizza that Donito's was infringing on its trademark by operating under a name that could cause confusion among consumers. Donito's was found to be operating six outlets in various regions of Punjab.

 

Key Points of the Court Order

1. Trademark Similarity: The court noted that the name ‘DONITO’S’ used by the Punjab-based chain was deceptively similar to ‘DOMINO’S,’ both phonetically and visually, leading to potential consumer confusion.

2. Ex-parte Ad Interim Injunction: The court issued an ex-parte ad interim injunction against Donito's, restraining them from using the trademark ‘DONITO’S’ for selling pizzas and burgers.

3. Online Presence: Domino's submitted a screenshot from a YouTube video where the hashtags #DOMINOS and #DONITOS were used together, reinforcing the claim of confusion.

4. Website and social media: The court directed Donito's to remove all references to its trademarks related to pizzas and burgers from its domain (www.donito's.in) and instructed social media platforms to take down listings of Donito's products.

 

Intellectual Property Rights and Trademarks

Intellectual property rights (IPR) protect creations of the mind, including trademarks, which are essential for distinguishing goods and services in the marketplace. Here is a brief overview:

• Trademark: A sign, design, or expression that identifies and distinguishes products or services of a particular source from those of others.
• Types of Trademarks: Includes logos, words, phrases, symbols, designs, sound mark,s or a combination of these.
• Registration: Provides legal protection and grants the owner exclusive rights to use the trademark for the products or services it covers.
• Infringement: Unauthorized use of a trademark that is identical or confusingly similar to a registered trademark, leading to potential consumer deception.

 

 Legal Framework in India

1. Historical Background:

•    Before 1940, trademark disputes were resolved under the Specific Relief Act, 1877, and the Indian Registration Act, 1908.
•    The first comprehensive trademark law in India was enacted in 1940.

2. Trademark Acts:

•   The Trademark and Merchandise Act, 1958: Provided better protection against fraudulent use of trademarks.
•   The Trademark Act, 1999: Replaced the 1958 Act to comply with TRIPS (Trade-Related Aspects of Intellectual Property Rights)           obligations, providing enhanced protection and enforcement measures.

3. Registration Process:

•    Any individual or entity claiming to be the owner of a trademark can apply for registration.
•    The application must include details such as the name, address, goods/services, and the class of goods/services.

4. Duration and Renewal:

•    Trademark registration is valid for ten years and can be renewed indefinitely for additional ten-year periods.

5. Infringement and Passing Off:

• Trademark infringement occurs when an unauthorized party uses a mark identical or deceptively similar to a registered trademark.
• Passing off is a common law remedy used to protect unregistered trademarks, where the defendant's actions confuse consumers, leading them to believe that the defendant’s goods or services are those of the plaintiff.

 

Expanding Boundaries of Trademarks

• Domain Names: Companies often face challenges related to cyberpiracy, where unauthorized parties register domain names similar to  well-known trademarks to mislead consumers.
• Non-Traditional Marks: These include smell marks, sound marks, and color marks. However, these are often difficult to register due to the lack of a clear graphical representation.

 

 Conclusion

The Delhi High Court's decision in favor of Domino's underscores the importance of trademark protection and the legal recourse available to trademark owners against kopior klockor infringement. It highlights the need for businesses to be vigilant about their intellectual property rights and take necessary actions to protect their trademarks from unauthorized use, ensuring that consumers are not misled by similar marks.

 

Authored by: Ansh Verma,

Symbiosis Law School, Noida