Subway Can’t Claim Exclusivity Over Word ‘Sub’, ‘Suberb’ Not Phonetically Similar To 'Subway': Delhi High Court

Dismissing its prayer for interim injunction, the Delhi High Court has observed that Subway cannot claim any exclusivity over the word ‘Sub’, especially when used in the context of eateries serving submarine sandwiches.

Justice C Hari Shankar ruled that the word "Sub" is "publici juris" when used in the context of eateries dealing with submarine sandwiches

“No exclusivity can, therefore, be claimed, by the petitioner over the first part of its registered SUBWAY mark, i.e, "SUB." The plaintiff cannot claim a monopoly over all two-syllable words of which the first syllable is "SUB", especially when used in the context of eateries which serve sandwiches and similar items," the court said.

Dealing with a case alleging that 'Suberb' infringes the registered trademarks of the American fast food restaurant franchise, the court said it is clear that 'Suberb' cannot be said in any manner of speaking to infringe any of Subway's word marks or device works.

"'SUBERB' is not phonetically similar to 'SUBWAY', though both are words of two syllables. The first syllable ‗SUB‘ is common. 'Sub', when used in the context of sandwiches, it is well known, is an abbreviation for 'Submarine', which represents a well known variety of long-bodied sandwiches, generally 6 or 9 inches in length," it added.

The court also said submarine sandwiches or 'subs' and their common abbreviation are part of common knowledge and can, therefore, be taken into account under Sections 56 and 57 of the Indian Evidence Act, 1872, as held by the Supreme Court in the Onkar Nath v. Delhi Administration.

Subway IP LLC last year moved court against Infinity Foods LLP and other individuals being aggrieved by the use of brand name and logo “Suberb” with a yellow and green colour scheme, alleging that it was identical to its mark “Subway”.

Subway was also aggrieved by the use of “Veggie Delicious” and “Sub on a club” by the defendants in respect of sandwiches and stated that they were deceptively similar to its registered marks “Veggie Delite” and “Subway Club.” It was also aggrieved by the use of identical or substantially similar signage, outlet décor, menu cards, paper napkins and staff uniforms.

On December 21, 2022, the matter was adjourned for enabling defendants to examine as to whether they could carry out modifications which would satisfy Subway that they were no longer infringing its trademarks.

Accordingly, the defendants sent an e-mail to Subway offering to make certain changes in their logo, colour combination used in signage outside their restaurants. 

The email said that the defendants will not use yellow or green colour either in the signage or the S logo and that they will pull down the websites which copied the text found on Subway’s website. It was also undertaken that the names of the sandwiches “Veggie Delicious” and “Sub on a club” will be changed to “Veg loaded regular” and “Torta Club.”

Prima facie observing that no case of passing off goods and services of Subway is made out in the matter, the court said there is no likelihood of a person of average intelligence, who desires to partake food from a Subway outlet, walking into an outlet of the defendants.

“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 “SUBERB” outlets,” the court said.

The court also said that the modifications carried out by the defendants in respect of the two marks concerning the sandwiches, “sets at rest” any allegation of infringement which could be levelled by Subway.

“The initial “VEG” syllable in “VEGGIE DELIGHT” and the “CLUB” word in “SUBWAY CLUB”, if kept out of the reckoning, there is no similarity between “VEGGIE DELITE” and “VEG LOADED REGULAR” or between “SUBWAY CLUB” and “TORTA CLUB”, the court said.

The court also said that club sandwiches form a distinct categories of sandwiches and when used in the context of such sandwiches, the word “Club” is publici juris.

Justice Shankar also said that the marks "Subway" and "Suberb", when used in the context of eateries serving submarine sandwiches, are not deceptively similar, as the word "Sub" is publici juris and common to the trade.

The court added that the words "Way" and "Erb" are neither phonetically nor otherwise similar.

"After the modifications undertaken by the defendant, 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 use the red and white colour combination. Their lettering, font and appearance are easily distinguishable from each other," the court said.

Noting that the defendants have now modified the décor, layout, wall hanging, menu cards and uniforms of the staff and its outlets, the court said: “While I reiterate that even if these features were similar, no claim to injunction could be sustained by the plaintiff on that ground, in view of the modification that the defendants have carried out, this issue does not survive for consideration. There is, as things stand now, no similarity between the defendants and the plaintiff even on these aspects,” the court said.

The court thus dismissed Subway’s application seeking interim injunction subject to the defendants carrying out the changes within a period of one week, along with an undertaking not to use the allegedly infringing marks.

Title: SUBWAY IP LLC v. INFINITY FOOD & ORS.

Citation: 2023 LiveLaw (Del) 45

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