Delhi High Court rules 'Subway' cannot claim monopoly on 'Sub' used by eateries

Delhi High Court rules 'Subway' cannot claim monopoly on 'Sub' used by eateries

It had suggested to Infinity Foods for carrying out modifications to not infringe the trademarks

The Delhi High Court has dismissed the request of Subway for an interim order in a trademark infringement claim against Suberb, a franchise restaurant in Delhi.

A single judge bench of Justice C Hari Shankar held that the term 'Sub' was widely used by eateries for submarine sandwiches.

The bench stated, "Subway and Suberb when used in the context of eateries serving submarine sandwiches, are not deceptively similar. 'Sub' is publici juris (belonging to the public) and common to the trade, and 'Way' and 'Erb' are neither phonetically nor otherwise similar."

The court upheld Infinity Foods' (defendant No.1) contention that Subway was so well known that there was hardly any chance that "a person who wished to partake from a Subway outlet would walk into one of the defendant's two outlets and partake from there."

Justice Shankar observed, "A person who wants to have food from a Subway outlet knows where to go; it would be quite unrealistic to visualize him walking, instead, into one of the defendant's Suburb outlets. It cannot, therefore, be said that the defendant's 'Suberb' mark infringes either the plaintiff's 'Subway' word mark or any of the plaintiff's 'Subway' device marks."

In December last, the court had adjourned the matter to allow the defendants, Infinity Foods and others, to examine whether they could carry out modifications to satisfy Subway that they were no longer infringing its trademarks.

The defendants sent an email to Subway offering to make certain changes in their logo, and the colour combination used in signage outside their restaurants. They said they would not use the yellow and green colours used in Subway signage or the 'S' logo. The defendants also said they would pull down the websites, which copied the text found on Subway's website.

Suberb also undertook to change the names of two sandwiches - from 'Veggie Delicious' and 'Sub on a Club' to 'Veg loaded regular' and 'Torta Club'.

Subway had alleged that the defendants infringed its brand name, and logo using an identical yellow and green scheme used by it. It also claimed that the defendants had used signage, outlet décor, and menu cards and food preparation procedures, techniques, service ingredients, formulae, recipes, and ingredients, that were substantially similar to the outlets of Subway.

After the defendants placed an affidavit on 3 January, the court observed the modifications undertaken by the defendants wherein the colour scheme of the Suberb mark had been changed to red and white.

The court, thus, stated, "The appearance of the defendant's red and white mark cannot be said to be deceptively similar to any of the plaintiff's Subway device marks, none of which uses the red and white colour combination. Their lettering, font and appearance are easily distinguishable from each other."

The court also mentioned that Suberb trademark did not infringe Subway's trademark in any manner as the term 'Sub' was an abbreviated form of the term submarine sandwiches, a common public knowledge. It further said that 'Suberb' was not phonetically similar to 'Subway', though both were words of two syllables.

Justice Shankar remarked, "The first syllable 'Sub' is common. When used in the context of sandwiches, it is well known that it is an abbreviation for 'Submarine', which represents a well-known variety of long-bodied sandwiches, generally 6 or 9 inches in length. 'Submarine Sandwich' has, in fact, its own Wikipedia page, the opening passage of which reads: 'A submarine sandwich, commonly known as a sub, hoagie (Philadelphia metropolitan area and Western Pennsylvania English), hero (New York City English), Italian (Maine English), grinder (New England English), wedge (Westchester, NY), or a spuckie (Boston English), is a type of American cold or hot sandwich made from a cylindrical bread roll split lengthwise and filled with meats, cheeses, vegetables, and condiments.

He added, "The terms submarine and sub are widespread in the US and not assignable to any certain part, though many of the localized terms are clustered in the north-eastern United States. Submarine sandwiches, or 'subs', and their common abbreviation are part of common knowledge."

Thus, the court held that no exclusivity could be claimed by Subway over the first part of its registered Subway mark, i.e, 'Sub'. It was of the view that Subway could not claim "a monopoly over all two-syllable words of which the first syllable is 'Sub', especially when used in the context of eateries that serve sandwiches and similar items."

The bench held that once the 'Sub' part of the Subway mark was out of the way, there was no similarity between 'way' and 'erb.'

In his order, the judge observed that there was substance in the defendant's contention that the 'Subway' brand was so well known that there was hardly any chance that a person who wished to partake from a Subway outlet would walk into a Suberb outlet.

It rejected the plaintiff's contention on the infringement of its registered trademarks 'Subway Club' and 'Veggie Delite'. It noted that the defendant had changed the name of its sandwiches to 'Veg Loaded Regular' and 'Torta Club' and "quite obviously" the marks could not be claimed to be similar.

The court also ruled that the plaintiff did not hold any registration in respect to the 'S' logo. Therefore. it could not allege any infringement. It recorded that the defendant had modified the décor, layout, wall hanging, menu cards, and uniforms of the staff and its outlets so as not to retain any similarity with the plaintiff.

The bench held that no law in the country allowed an injunction merely on the ground that the décor, layout or appearance of restaurants of two different entities are similar.

Justice Shankar said, "No claim of exclusivity in respect of the décor or layout of premises or menu cards, or staff uniforms, is available in Indian law."

"The defendants had carried out changes in the decor, menu cards, etc., in the outlets. Thus there was no similarity between the defendants and the plaintiff even on these aspects," he added.