Delhi High Court Topples the Dominoes of Trademark Infringement

The popular pizza chain, Domino’s had filed a civil suit before the Delhi High Court against eight food outlets for copying their registered trademark. The Court issued a restraint order against all the accused outlets. It debarred them from using marks like ‘Dominoz’, ‘Domino’ etc., since they sounded and looked like the Domino’s trademark. They were misrepresenting themselves to the consumers in this manner. The Court also ordered food aggregator apps like Zomato and Swiggy to delist these outlets.

Trademarks protect a brand’s unique identity and any unauthorised copy becomes a case of trademark infringement. In this Weekly, we’ll discuss what are trademarks and what counts as a trademark infringement. 

How did the eight food outlets infringe Domino’s trademark?

Tweaking or closely replicating a popular brand name or logo for a completely  different product  is a business strategy that has been used since time immemorial. However, not only is it unethical but also an offence under the intellectual property rights laws in India. 

This is because most brands protect their exclusive right to use and advertise certain unique designs or words as their logo or brand name through trademark registration. Registering a trademark gives the owner the exclusive right to use and advertise the mark for its goods and services.  The owner also gets the right to initiate legal action against any unauthorised use of the trademark and can get injunctions, damages and other reliefs from the court. 

By publicising their products under misleading similar names or using close replicas of Domino’s logo, these eight outlets violated Domino’s exclusive right over the brand name and the logo. Not only that, trademarks are distinguishable symbols which help a buyer in identifying the manufacturer or the source of the goods or services. It  is an indicator of the quality or authenticity of the goods and services. So, by deceiving the buyers into confusing their brands with Domino’s, these outlets were defrauding consumers. 

How can we determine whether a trademark has been infringed or not?

When a complaint regarding an alleged infringement of trademark is brought before the Courts, the ‘Triple Test’ is applied to probe into the complaint. This test examines the following three possibilities:

• Is the mark in question identical or deceptively similar to the registered trademark?
• Is the mark in question being used in a similar or identical field of activity as the registered trademark?
• Is the owner of the mark in question using it in such a way that is similar or identical to the registered mark?

What are the punishments for infringement of a trademark?

According to section(s) 27 to 29 of the Trade Marks Act, 1999, if the infringement is proven, then the Court can pass the following orders : 

• An injunction to stop the infringing party from using the disputed mark either permanently or temporarily. 
• Damages in the form of monetary compensation to the affected party.
• A share of profits from the infringing party.
• An order to remove or destroy any mark that the infringing party may have been using if found to be infringing a trademark. However, it must be remembered, that while an infringement suit is ongoing, the allegedly infringing mark cannot be tampered without any court order, this will count as an offence under the trademark law in India.

Trademark infringement can also lead to criminal proceedings where the infringing party can get jail time of six months to three years. The court can also impose fines ranging from Rs. 50,000 to Rs. 2 lakh as well as  decide to seize all products guilty of a trademark infringement. 

Does the law permit any use of identical marks?

To constitute a trademark infringement, the intention to deceive must be proven. Otherwise, the following  use of a mark, irrespective of their similarity to a registered trade mark will not be held as infringements:

• If the use is an instance of honest practice which will not adversely impact the registered mark;
• If the registered mark is not valid in the first place;
• If the owner has consented to the use of the mark;
• If the use is in respect of any accessories or parts of a registered mark. 

As consumers we must be wary of such fake or deceptive brands and if we ever fall prey to any form of misrepresentation, we must promptly file a complaint.