In the matter of
SUBWAY IP LLC …..Plaintiff
Versus
INFINITY FOOD & ORS. …..Defendants
Date of Order:-12.01.2023
The plaintiff was Subway IP LLC a Company incorporated in the State of Delaware, U.S., which operates a well-known global chain of restaurants under the name ‘SUBWAY‘, with the name being represented with the well known logos.
In India, plaintiff Subway IP LLC is registered properietor of registrations of the ‘SUBWAY‘ word and device marks, but also of ‘SUBWAY CLUB‘and ‘VEGGIE DELITE’.
The plaintiff, claimed exclusivity over the word and device marks SUBWAY word mark, logo and device and VEGGIE DELITE and SUBWAY CLUB.
Defendant 1 Infinity Foods LLP 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 has granted the right to franchise the plaintiff‘s outlets vide agreement dated 30th May 2019. Since then, Defendants 3 and 4 have, through the outlets owned by them, been serving and distributing the products of the plaintiff.
The plaintiff alleged that the following acts of Defendant 1 infringe the plaintiff‘s intellectual property rights:
(i) the use of the brand name and logo under which the two restaurants run by Defendant 1 in Delhi operate, with an identical yellow and green colour scheme,
(ii) the use of the brands VEGGIE DELICIOUS and SUB ON A CLUB which, according to the plaintiff, were deceptively similar to the plaintiff‘s registered VEGGIE DELITE and SUBWAY CLUB marks,
(iii) usage of identical, or substantially similar, signage, outlet décor, menu cards, paper napkins and staff uniforms,
(iv) use of photographs and wall art, in their outlets, which are similar to the photographs and wall art in the plaintiff‘s outlets,
(v) 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 the plaintiff‘s outlets, and
(vi) verbatim reproduction, on the defendants‘ website, of the recitals in the plaintiff‘s website, with similar layout of headings etc.
ADJOURNMENT TAKEN BY DEFENDANT COUNSEL
At request of Counsel for the defendants, Court adjourned the matter to enable the defendants to examine whether they could carry out modifications, which would satisfy the plaintiff that they were no longer infringing the plaintiff‘s intellectual property rights.
The defendants, thereafter, through an e-mail to the plaintiff, offered to make certain changes in their logo/layout, etc., the defendants offered to:-
(i) change the colour combination used in the signage outside their restaurants to a combination of purple, pink, white or red,
(ii) change the colour of the logo to a combination of one or more of the colours purple, pink, white or red,
(iii) not to use yellow or green either in the aforesaid signage or the S logo,
(iv) pull down the websites of the defendants which copied the text found on the website of the plaintiff and
(v) change the names ―VEGGIE DELICIOUS and ―SUB ON A CLUB, by which they designated their sandwiches to ―VEG LOADED REGULAR and ―TORTA CLUB.
Plaintiff counsel replied through an email, that the proposal does not address the issue of their use of the objectionable marks SUBERB, SUBERB logo ,SUBERB device the trade dress identical to that of restaurants under plaintiff’s mark/name SUBWAY and/or elements of their SUBWAY System etc. So, the proposal of the defendants was rejected by the plaintiff.
The Court now had to decide the application filed by the plaintiff under Order XXXIX Rules 1 and 2 of the CPC, that whether, after the modifications made by the Defendants, is plaintiff still entitle to an Injunction.
Now, the Court had to consider whether, as a whole, the mark of the defendant infringes the registered trade marks of the plaintiff and If they do not, then, the Court may examine whether, if any part of the plaintiff‘s registered trade marks, which constitutes the dominant part thereof are infringed by defendant‘s mark.
Court said, that defendant‘s mark cannot be said, in any manner of speaking is infringing any of plaintiff‘s word marks or device marks.
Court said that the trademark ‘SUBERB‘ of defendants is not phonetically similar to plaintiff mark ‘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.
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.
‘Sub’ as a word is common to public
‘Sub‘ is, therefore, publici juris, when used in the context of such eateries.
No exclusivity on the word ‘Sub’
So, no exclusivity could have been claimed, by the plaintiff over the first part of its registered SUBWAY mark, i.e, ‘SUB‘.
Once, the ‘SUB‘ part of the SUBWAY mark was out of the way, then quite obviously, no similarity, at all was seen between ‘WAY‘ and ‘ERB‘.
Subway and Suberb are not similar
Court considered view was ‘SUBWAY‘ and ‘SUBERB‘, when used in the context of eateries serving submarine sandwiches are not, therefore, deceptively similar, as ‘SUB‘ is publici juris and common to the trade, and ‘WAY‘ and ‘ERB‘ are neither phonetically nor otherwise similar.
Modifications by defendants accepted by the Court
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.
Plaintiff‘s word marks SUBWAY CLUB and VEGGIE DELITE
The plaintiff originally contended that its registered trademarks SUBWAY CLUB and VEGGIE DELITE stood infringed by the defendants‘ marks VEGGIE DELICIOUS and SUB ON A CLUB. The defendants have, subsequently, modified the said marks with respect to the sandwiches, to VEG LOADED REGULAR and TORTA CLUB.
Now, the marks VEG LOADED REGULAR and TORTA CLUB, were not similar to the marks of the plaintiff.
Court said, that there is no likelihood that a person of average intelligence, who desires to partake of food from a ―SUBWAY outlet, walking, instead, into an outlet of the defendants.
In order to establish, commission of the tort of passing off, the plaintiff would have to demonstrate that a person of average intelligence and imperfect recollection is likely, owing to the manner in which the defendants use their marks and other such features, to confuse the goods and services of the defendants with those of the planitiff.
On facts, therefore, prima facie, no case of passing off was made out by the plaintiff.
Court said, that it was discussed by the plaintiff that there is similarity in the layout of the restaurants, counters, staff uniform and menu cards.
No person can claim any monopoly, in law, over these aspects.
As the law operates in this country, even if the décor, layout, or appearance of the restaurant of the defendant is identical to that of the plaintiff, that cannot justify an order of injunction by a Court.
No claim of exclusivity in respect of the décor or layout of premises or menu cards, or staff uniforms, is available in Indian law.
Court mentioned that the defendants have, nonetheless, 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 in this regard, 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.
Prayer of Interim Injunction was denied.
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