Delhi High Court: In a case wherein, Subway filed for an injunction for its mark “SUBWAY” against the mark “SUBERB”, C. Hari Shankar, J. dismissed the application for injunction and held that after the modifications undertaken by Infinity Food in respect of décor, layout, wall hanging, menu cards and uniforms of the staff and its outlets, the appearance of Infinity Food's red and white “SUBERB” mark could not be said to be deceptively similar to Subway's device mark, “SUBWAY”.
Background
The plaintiff (Subway) was a Company incorporated in the U.S., which operated a well-known global chain of restaurants under the name “SUBWAY” and the plaintiff was the proprietor in India of registration not only of the “SUBWAY” word and device marks, but also of “SUBWAY CLUB” and “VEGGIE DELITE”, being the names allotted by the plaintiff to its club sandwich and vegetable sandwich, respectively.
Defendant 1 (Infinity Food) was a partnership firm of which Defendants 3 and 4 were partners. Defendants 3 and 4 were licensees of the plaintiff, to whom the plaintiff had granted the right to franchise the plaintiff's outlets and since 2019, they had been serving and distributing products of the plaintiff through the outlets owned by them.
Submissions on behalf of the Plaintiff
Subway alleged that the following acts of Infinity Food infringed Subway's intellectual property rights:
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the use of the brand name and logo “SUBWAY” under which the two restaurants run by Infinity Food operate, with an identical yellow and green colour scheme;
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the use of the brands “VEGGIE DELICIOUS” and “SUB ON A CLUB” which were deceptively similar to Subway's registered “VEGGIE DELITE” and “SUBWAY CLUB” marks;
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usage of identical, or similar, signage, outlet décor, menu cards, paper napkins and staff uniforms;
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use of photographs and wall art, in their outlets, which were similar to the photographs and wall art in Subway's outlets;
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use of food preparation procedures, techniques, service ingredients, formulae, recipes, ingredients, and placement of the service counters in the restaurants identical to that seen in Subway's outlets; and
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verbatim reproduction, on Infinity Food's website, of the recitals in Subway’s website, with similar layout of headings, etc.
Submissions on behalf of the Defendants
Infinity Food offered to (a) make change in the colour combination used in the signage outside their restaurants to a combination of purple, pink, white or red; (b) make change in the colour of their logo to a combination of one or more of the colours purple, pink, white or red; (c) not to use yellow or green either in the signage or logo; (d) pull down their website which copied the text found on Subway's website and (e) change the names of their sandwiches “VEGGIE DELICIOUS” and “SUB ON A CLUB” to “VEG LOADED REGULAR” and “TORTA CLUB”.
Analysis, Law, and Decision
The Court noted that Subway was not satisfied with the changes that Infinity Food made as the marks “SUBWAY” and “SUBERB” were deceptively similar to each other as word marks and even if the colour scheme of the said marks was changed, the marks would continue to remain deceptively similar. The Court further noted that Infinity Food contended that Subway could not claim exclusivity in the initial “SUB” part of the “SUBWAY” mark as “SUB” was generic with respect to the products in relation to which it was used.
The issue for consideration before this Court was “whether after the modifications that Infinity Food had undertaken, it could still be said to be infringing Subway's registered trade mark, or passing off their goods and services as those of Subway's, so as to entitle Subway to an injunction?”.
The Court noted that under Section 29 of the Trade Marks Act, 1999 (Act), infringement could only be of registered trade marks and the marks of which Subway had subsisting registrations, which were entitled to protection under Section 28 of the Act were: the word mark “SUBWAY” and the device mark “SUBWAY”. Subway had no other registered trade mark, to which it was entitled to protection against infringement from this Court. The Court further noted that Section 17(2) of the Act did not permit dissection of a trade mark and claiming of exclusivity in respect of part of the mark (anti-dissection rule) or claiming of infringement in respect of any matter which was common to the trade or otherwise of a non-distinctive character (publici juris).
The Court opined that Infinity Food's mark “SUBERB” could not be said to infringe any of Subway's word mark or device mark as “SUBERB” was not phonetically similar to “SUBWAY” though both were words of two syllables. The first syllable “SUB” was common and “SUB”, when used in the context of sandwiches, it was well known that it was an abbreviation for “Submarine”, which represented a well-known variety of long-bodied sandwiches, generally 6 or 9 inches in length. “SUB” was therefore, publici juris when used in context of such eateries and thus, no exclusivity could be claimed by Subway over the first part of its registered “SUBWAY” mark, that is, “SUB”. Moreover, once the “SUB” part of the “SUBWAY” mark was out of the way, there was quite obviously no similarity at all between “WAY” and “ERB”.
The Court relied on J.R. Kapoor v. Micronix India, 1994 Supp (3) SCC 215, wherein the Supreme Court held that no exclusivity could be claimed over the prefix “Micro” and that, as the suffixes “Nix” and “Tel” were dissimilar phonetically and otherwise, no infringement could be alleged. The Court also relied on Schering Corporation v. Alkem Laboratories Ltd, (2009) SCC OnLine Del 3886, wherein the Division Bench of this Court held that “Temokem” not to be deceptively similar to “Temoget” when used for pharmaceutical preparations containing Temozolamide.
The Court held that after the modifications undertaken by Infinity Food, the appearance of Infinity Food's red and white “SUBERB” mark could not be said to be deceptively similar to Subway's device mark. Further, the modifications in respect of the two marks “VEG LOADED REGULAR” and “TORTA CLUB” would rest any allegation of infringement as the words “CLUB” and “VEG” were publici juris.
The Court held that prima facie, no case of passing-off had been made out and no claim to injunction could be sustained by Subway in view of the modifications that Infinity Food had carried out. Therefore, the prayer for interim injunction was dismissed.
[Subway IP LLC v. Infinity Food, 2023 SCC OnLine Del 150, Order dated 12-1-2023]
Advocates who appeared in this case :
For the Plaintiff: Senior Advocate Sandeep Sethi
Advocate Peeyoosh Kalra
Advocate Gaurav Mukerjee
Advocate Suyash Malhotra
For the Defendants: Advocate Rishabh Singh
Advocate Pushkar Sood
Advocate K.P. Singh
Advocate Anshuman Sood
Advocate Keshav Rai
Advocate Vishwajeet Singh
Advocate Tarkar
*Simranjeet Kaur, Editorial Assistant has reported this brief