Subway IP LLC v. Infinity Food & Ors.

A significant trademark case concerning the anti-dissection rule, publici juris elements, deceptive similarity, and protection of the SUBWAY brand.

Short Description About the Case

This case involved Subway IP LLC, proprietor of the SUBWAY trademarks, and Infinity Foods LLP, which operated restaurants under the name SUBERB. Subway alleged that the defendants' mark, logo, colour scheme, restaurant décor and sandwich names were deceptively similar to its registered trademarks and trade presentation. The Delhi High Court examined the anti-dissection rule, the concept of publici juris, dominant features of composite marks, and the likelihood of consumer confusion.

Facts

Subway IP LLC operated a well-known global restaurant chain under the SUBWAY brand and owned several registered trademarks in India, including SUBWAY, SUBWAY CLUB and VEGGIE DELITE.

Infinity Foods LLP and its partners operated restaurants under the mark SUBERB.

Subway alleged that the defendants were using a similar brand name and logo, similar colour combinations, restaurant décor, signage, menu cards, uniforms and sandwich names.

Subway particularly alleged infringement of its SUBWAY, SUBWAY CLUB and VEGGIE DELITE trademarks and sought an interim injunction against the defendants.

Findings

The Court applied the anti-dissection rule, observing that a composite trademark should ordinarily be considered as a whole and cannot be dissected merely to claim exclusivity over one portion.

The Court also considered whether any portion of the mark was dominant and distinctive, which could justify examining that particular feature separately.

With respect to SUBWAY and SUBERB, the Court held that the two marks were not phonetically similar.

The Court observed that “SUB”, when used in the context of sandwiches, is an abbreviation associated with “submarine sandwich” and is therefore publici juris. Exclusive rights could not be claimed over the common element “SUB” in that context.

The Court further noted that once “SUB” was disregarded as a common element, “WAY” and “ERB” were not similar.

The Court also considered the relevant class of consumers and held that a person intending to visit a SUBWAY outlet would not realistically be expected to enter a SUBERB outlet merely because of the alleged similarity.

Suggestion

This case is highly useful in matters involving trademark infringement, anti-dissection rule, publici juris, dominant feature, deceptive similarity, restaurant trademarks, trade dress and consumer confusion.

It can be cited where an opponent attempts to claim exclusive rights over a common or descriptive portion of a composite trademark.

For practical legal use, this case supports the principle that common elements of a trademark which are publici juris cannot ordinarily be monopolised, and composite marks must generally be assessed as a whole while considering any genuinely distinctive dominant feature.

Judgment

The Delhi High Court dismissed Subway's application for interim injunction.

The Court held that SUBERB was not deceptively or phonetically similar to SUBWAY, particularly after considering the common nature of the element “SUB” in the context of sandwich businesses.

The Court also considered the modifications made by the defendants to their décor, menu, signage, uniforms and other elements and found no sufficient basis at the interim stage to restrain the defendants.