Law In India Doesn't Allow Grant Of Injunction Merely On Ground Of Similarity In Décor, Appearance Of Two Different Restaurants: Delhi High Court

The Delhi High Court has observed that law in India does not allow the grant of injunction in a trademark infringement case merely on the ground of similarity in décor or appearance of two different restaurants.

Justice C Hari Shankar added that no claim of exclucivity is available in Indian law in respect of décor, layout of premises, menu cards or staff uniforms of such restaurants.

“The law in this country does not allow grant of an injunction merely on the ground that décor, layout or appearance of restaurants of two different entities are similar,” the court said.

The observations were made while dismissing an application moved by Subway IP LLC seeking interim injunction against Infinity Foods LLP and other individuals. While the application was dismissed on various other grounds, the court also considered whether similarity in the layout of the restaurants, counters, staff uniform and menu cards can justify an injunction by the court.

Subway was 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.

Justice Shankar said that no person can claim any monopoly in law over similarity in the layout of the restaurants, counters, staff uniform and menu cards. “As the law operates in this country, even if the décor, layout, or appearance of the restaurant of the defendant is identical, let alone similar, to that of the plaintiff, that cannot justify an order of injunction by a Court,” the court said.

The court thus differed from three judgments of a court in Canada in Mr Submarine Ltd v. Bikas, Mr Submarine Ltd v. Emma Foods and Mr Submarine v. Haralambos Voultsos, which dealt with outlets serving submarine sandwiches.

Justice Shankar said that the very title of the franchise - “Mr Submarine”, testifies to the commonality of the usage of “Submarine” as a “moniker for sandwiches” of a particular type.

"Sub" is, therefore, publici juris, when used in the context of such eateries," the court said.

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.”

Denying interim relief, the court noted that the defendants have modified the décor, layout, wall hanging, menu cards and uniforms of the staff and its outlets so as to not retain any similarity with Subway.

“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 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.

Read more details here.

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

Citation: 2023 LiveLaw (Del) 45

Click Here To Read Order