Hot stuff in pizza war

A pizza battle is on its way in England between Hot Stuff Foods and fast food giant Domino's. Hot Stuff, of Sioux Falls, South Dakota, and a player in the pizza market since 1983, filed a Community trade mark application for the word mark HOT STUFF PIZZA in June 1996; the mark was granted in Januay 1999. It trades through 14 franchised outlets across the UK. However, since April this year Domino's has been selling its own 'Hot Stuff Pizza', despite being asked to withdraw the promotion soon after it began.

Richard Kempner (Addleshaw Goddard) is acting for Hot Stuff Pizza. He says:

"Our clients are rightly very worried that their customers will be fooled into believing that their 'Hot Stuff Pizza' pizza is now available from Domino's, which it isn't and couldn't be. All they ask is that Domino's admit and put right their mistake – and are seen to do so".

The IPKat says, now here's an exciting dilemma for Domino's. Options include (i) an attack on the validity of the registration as consisting solely of descriptive terms or terms used in the trade (HOT STUFF PIZZA is stuff, which is generally sold and eaten hot, and the word is registered for pizza); (ii) a defence of descriptive use, (iii) buying out Hot Stuff Pizza and taking its assets, (iv) carrying on infringing and brazening out an infringement action in the hope that the mark will eventually become so badly damaged that its owners will consider rebranding, and (v) stopping infringing and saying "sorry". Game theorists: it's up to you to decide which is the best strategy.

Merpel demurs: this is another case of the IPKat speculating without having all the facts before him and without having heard both sides. Would a respectable trading company such as Domino's - a veritable benefactor of the hungry - dream of acting in an unconscionable manner when it has the interests of its shareholders, its customers and its own good name to consider?

Pizza Wars here and here
The Domino Theory here