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Synopsis

The Delhi High Court in its one recent judgment has opined that Subway cannot claim an exclusive right on the word "Sub'.

A bench of Justice C Hari Shankar refused to pass an ad-interim injunction order against the Delhi-based restaurant with the name "Suberb" and held that it was not deceptively similar to “SUBWAY”.

The order has been passed in a plea filed by a well-known global chain of restaurants under the name "SUBWAY" against Infinity Foods which runs restaurants under the name of "Suberb". The plea alleged that the restaurants are being run with similar yellow and green color schemes, the use of the brands VEGGIE DELICIOUS and SUB ON A CLUB which, according to Subway, were deceptively similar to the plaintiff‘s registered VEGGIE DELITE and SUBWAY CLUB marks.

However, in view of the allegations, after the first day of the hearing, the defendants offered to change:

1. the color combination used in the signage outside their restaurant to a combination of purple, pink, white, or red,
2. change the color of the logo to a combination of one or more of the colors purple, pink, white or red,
3. not to use yellow or green either in the aforesaid signage or the S logo,
4. pull down the websites of the defendants which copied the text found on the plaintiff's website,
5. change the names "VEGGIE DELICIOUS" and "SUB ON A CLUB", by which they designated their sandwiches to "VEG LOADED REGULAR" and "TORTA CLUB".

Whereas, Senior Advocate Sandeep Sethi appearing for Subway submitted that they were not satisfied with the changes and that the acts of infringement committed by the defendant before they agreed to undertake modifications as noted above, were blatant. 

Additionally, the intent of the defendants to copyright on the plaintiff's goodwill was transparent, Sethi added.

On the other side, Senior Advocate Pushkar Sood, appearing for the defendants submitted that with the changes that the defendants had volunteered to make, the allegation of infringement and passing off, leveled by the plaintiff, could no more sustain. He submitted that the defendants had only two outlets, at Shalimar Bagh, Delhi, and at Gurgaon, and had already implemented these changes at both outlets.

The High Court opined that "SUBWAY‘ and "SUBERB", when used in the context of eateries serving submarine sandwiches were not, therefore, deceptively similar, as "SUB" is publici juris and common to the trade, and "WAY" and "ERB" are neither phonetically nor otherwise similar.

The High Court said, "There is no likelihood, whatsoever, of a person of average intelligence, who desires to partake of food from a "SUBWAY" outlet, walking, instead, into an outlet of the defendants. No material which could lead to the inference of any such possibility has been placed on record by the plaintiff."

Case Title: Subway IP LLC Vs. Infinity Food & Ors