Source: Delhi High Court

Why in News?

Justice C Hari Shankar observed that the intent to capitalize on the reputation of a known brand, by using a mark similar to the mark of that brand, can give rise to an apprehension of quality compromise by the imitator.

• The Delhi High Court gave this observation in the case of Dominos IP Holder LLC & Anr. v. MS Dominick Pizza & Anr.

What is the Background of Dominos IP Holder LLC & Anr. v. MS Dominick Pizza & Anr Case?

• Domino's (plaintiff) sought a permanent injunction against Dominick Pizza, which has three outlets i.e., two at Ghaziabad, Uttar Pradesh and one in Punjab.
• Domino's plead before court the protection of its registered mark 'Domino's Pizza', and the accompanying marks also the marks 'Cheese Burst' and 'Pasta Italiano'.
• By virtue of being the owner of the said registered marks, the plaintiffs are entitled under Section 28(1) of the Trademarks Act, 1999 to protect themselves against infringement of the said marks.
• Domino’s contended before court that it is leading to confusion among customers.
• Previously the bench of Justice Pratibha M Singh of Delhi HC gave interim injunction to plaintiff.

What were the Court’s Observations?

• Delhi HC observed that Dominick Pizza is restrained from advertising, selling or marketing any product, packaging, menu cards and advertising material using the marks “Dominick Pizza”, “CHEESE BURST” and “PASTA ITLAIANO” or any other mark identical or deceptively similar to plaintiff’s registered trademark “Domino’s”.

What is a Permanent Injunction?

• About:
  • A permanent injunction is a court order that restrains a party from engaging in certain conduct or compels them to perform specific acts.
  • It is considered a final and permanent remedy, distinct from preliminary injunctions, which are issued on a temporary basis during the pendency of a legal proceeding.
• Object:
  • It is a remedy sought by plaintiffs when they seek to prevent an ongoing or imminent harm that cannot be adequately addressed through monetary compensation alone.
  • The objective of a permanent injunction is to provide a lasting solution to a legal dispute by preventing the recurrence of wrongful conduct or enforcing a positive obligation.
• Under Specific Relief Act, 1963:
  • Permanent or Perpetual injunction is granted under Section 38 of the Specific Relief Act, 1963 (SRA).
  • Sub-section (1) of Section 38 of SRA states that a perpetual injunction may be granted to the plaintiff to prevent the breach of an obligation existing in his favour, whether expressly or by implication.
• Nature:
  • A permanent injunction is conclusive in nature and is given as a decree after hearing the merits of the case.
  • It cannot be revoked by the court who passed the order; however, it can be revoked at an appellate stage.

Legal Provisions

• Section 28(1) of the Trademarks Act, 1999: Rights conferred by registration —
  • (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
  • (2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.
  • (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.