IPR Newsletter: Case Analysis: SUBWAY IP LLC vs INFINITY FOOD & ORS – February 2023
Introduction
Right which grants exclusivity to an owner regarding his product. A trademark can be in the form of a word, phrase, logo, etc. To protect the product from misuse, the trademark has to be registered. After it is registered, it becomes the exclusive right of the owner and no third party can claim over it. The violation of a registered trademark is known as trademark infringement. In India, a trademark is protected from infringement by the Trademarks Act of 1999.
Recently, an appealing trademark infringement case has come to light. Subway the global international fast-food chain sought an injunction against a local restaurant in Delhi called Suberb. The injunction was sought against the use of the word “Sub” in Suberb. However, the Delhi High Court dismissed Subway’s injunction order on the grounds that exclusivity cannot be claimed over the use of the ‘Sub’.
Background Of The Case
Subway as we all know is a world-famous international fast-food chain. Plaintiff (Subway) has successfully registered their trademarks for the term “Subway”, their logo and also two of the dishes which are ‘Subway Club’ and ‘Veggie Delite’.
The defendants (Suberb) were represented by Infinity Foods LLC. Subway has given a right to franchise their outlets to Suberb who have been selling their products since 2019. A right to franchise means the right to use the name of the franchisor i.e., the original entity for a specific number of years. The main contentions of Subway were that the Suberb is using the Subway brand name and logo for their restaurants, similar products, menu cards, the layout of the restaurants, recipes, procedures, uniforms of the staff, etc.
Analysis Of The Judgement
Infinity Foods in their submission were ready to alter the color scheme of the exterior signage of their restaurants to a combination of purple, pink, white, or red, change the color of their logo to a combination of one or more of the aforementioned colors, and refrain from using the colors yellow or green in either the signage or the logo.
The Delhi High Court dismissed the order for an interim injunction while stating exclusive claim over the term “Sub” cannot be granted especially in terms of eateries selling submarine club sandwiches. The Court noted that SUBBERB and SUBWAY do not have phonetic resemblance and hence cannot be considered similar. The term Sub when used in the context of sandwiches, is generally implied as SUBMARINE sandwiches which are 6 or 9 inches long. Regarding the modifications done by Infinity Foods, the court observed that the modifications set at rest any allegations of infringement levelled by Subway and are fair.
The Court referred to Section 17 of the Trademarks Act which prohibits dissection and assertion of the mark in respect of a particular portion of the mark. Lastly, the court opined that the rest of the terms in both the words, i.e., WAY and ERB are not at all similar to each other, hence the Sub cannot be exclusively claimed.
Conclusion
Justice Hari Shankar while reading out the judgment, referred to the maxim “publici juris” in the context of sandwiches which means a public right. The term signifies a thing or a right that is open and exercisable by all persons. Hence, this means that the term Sub is not an exclusive private right but something which belongs to the entire community.
Due to this, the court observed that the alterations made by the Suberb were fair so the interim injunction filed by Subway was quashed.
