IP Advice: Think Twice Before Starting a Litigation Process

dominos pizza

Sometimes companies who owns certain trademarks that are similar to the brands of well-known corporations file lawsuits that at some point of the process they won’t be able to sustain their point.

For a couple of years there has been a trademark litigation between Domino's IP holder (Domino’s Pizza), its franchise in Chile marketed by Better Food Limitada and the demanding part Productos Alimenticios Donuts Limitadas who owns the trademark Dominó Fuente de Soda.

The case occurred in 2012, when Dominó filed a lawsuit for enforcement of intellectual property rights, claiming that Domino's Pizza and Better Food infringed the exclusive and restricted use rights of the trademark to distinguish restaurants and soda fountains throughout the country, with their brand.

The trademark infringement claims by Dominó Fuente de Soda was based on the Industrial Property Act of 1991, which extended the existing territorial protection of provincial trademarks to a national trademark protection.

However, a civil court in Santiago rejected the lawsuit, arguing that both brands had particular characteristics, phonetic and graphic similarities but clarified that the brands identifies different entities, leaving the possibility of using the Domino's Pizza brand throughout Chile. The demandent part hasn't pronounced or filed any document to appeal to this decision. 

This legal case is a clear example of what we mention before. It is extremely important that when a client is looking forward to file a lawsuit to go over the possible things that might go wrong or right on the process in order to advise them, if it is a good option to proceed or not.

For litigation advice and processes regarding patents and trademarks in Latin America, do not hesitate to contact us at: info@brlatina.com Find the best solutions with our team, don’t waste time and money. We will provide a professional advice always thinking in your benefits.