SUBWAY, a popular sandwich chain, has sought an injunction against another eatery using the mark SUBERB. The Court, in its ruling, observed ‘SUBERB’ is not phonetically similar to ‘SUBWAY, ‘though both are words of two syllables. The first syllable, ‘SUB’ is common when used in the context of sandwiches, It is also well known that ‘SUB’ is an abbreviation for ‘Submarine‘, which represents a well-known variety of long-bodied sandwiches, generally 6 or 9 inches in length.

Facts & Background

Subway IP LLC (Subway) brought a trademark infringement and passing off suit against Infinity Food & Ors (Infinity Food) for the use of the mark SUBERB and a similar colour scheme. The rival marks are appended below.

vs

Subway alleged that the following acts of Infinity Food infringed their intellectual property rights:

1. the use of the brand name and logo for two restaurants with an identical yellow and green colour scheme;
2. use of the brands ‘VEGGIE DELICIOUS’ and ‘SUB ON A CLUB’ which are deceptively similar to their registered ‘VEGGIE DELITE’ and ‘SUBWAY CLUB’ marks;
3. use of identical or substantially similar signage, outlet décor, menu cards, paper napkins, and staff uniforms;
4. use of photographs and wall art which are similar to those used by SIP outlet/s; 
5. use of food preparation procedures, techniques, service ingredients, formulae, recipes, ingredients, and placement of the service counters identical to those seen in Subway outlets; and
6. verbatim reproduction of recitals on the website of Infinity Food with a similar layout as used by Subway.

At the initial stage of the suit, Infinity Food sought the Court’s permission to modify the colour scheme, layout, website, signage, etc., to redress the grievances of Subway. Infinity Food also changed the names of the sandwiches ‘VEGGIE DELICIOUS’ and ‘SUB ON A CLUB’ to ‘VEG LOADED REGULAR’ and ‘TORTA CLUB’, respectively.

However, as the proposed changes were not acceptable to SUBWAY, the injunction application was heard by the court.

SUBWAY sought an injunction on the following grounds:

1. Infinity Food was blatantly infringing Subway’s rights prior to making the changes. Moreover, they intended to copy and ride on the goodwill and reputation of Subway. 
2. The marks SUBWAY and SUBERB are deceptively similar. Even the changes made to the colour scheme will not make any difference as the rival word marks continue to be deceptively similar.
3. As Infinity Food was a licensee of Subway, it is a clear case of dishonesty entitling Subway to injunctive relief. 

Infinity Food contended:

1. Pursuant to the changes made by Infinity Food, no action for infringement and passing off will lie against them. 
2. They have made wholesome changes, including the wall décor of their outlets, colour schemes, uniforms, menu cards, signage, etc. 
3. Subway cannot claim exclusivity over the prefix ‘SUB’ in SUBWAY as it is a generic word concerning the products in relation to which it is used. 

Court’s findings

The issue in the instant matter is whether, subsequent to the changes made by Infinity Food still, an action for infringement and passing off will lie against them. The Court ruled in favour of Infinity Food and provided the reasons below.

1. It is a settled legal principle that marks must be considered in entirety. Further, it is also permissible to accord more or less importance or ‘dominance’ to a particular portion or element of a mark in cases of composite marks. Therefore, a particular element of a composite mark that enjoys greater prominence as compared to other constituent elements may be termed as a ‘dominant mark’.
2. ‘SUBERB’ is not phonetically similar to ‘SUBWAY’, though both are words of two syllables. The first syllable, ‘SUB’, is common when used in the context of sandwiches. It is also well known that ‘SUB’ is an abbreviation for ‘Submarine‘, which represents a well-known variety of long-bodied sandwiches, generally 6 or 9 inches in length.  
3. Subway cannot claim a monopoly over all two-syllable words, of which the first syllable is ‘SUB, ‘especially when used in the context of eateries that serve sandwiches and similar items. In the circumstances, once the ‘SUB‘ part of the SUBWAY mark is taken out, there is no similarity between ‘WAY‘ and ‘ERB. ‘
4. Further to the modifications by Infinity Food, the red and white mark cannot be said to be deceptively similar to any of Subway’s device marks, as none use the red and white colour combination. Moreover, the lettering, font, and appearance are also distinguishable from each other.
5. The Court found no merit in the contention that SUBWAY is a well-known brand, and there is hardly any chance that a person who wishes to partake from a Subway outlet will get confused with an Infinity Food outlet and partake from there. Subway has not placed on record any material which could lead to any such inference. Thus, no case of passing off is made out. 
6. Subway initially contended that SUBWAY CLUB and VEGGIE DELITE stood infringed by the marks ‘VEGGIE DELICIOUS’ and ‘SUB ON A CLUB’ used by Infinity Food. However, the latter has modified the said marks to ‘VEG LOADED REGULAR’ and ‘TORTA CLUB’. The said modifications set any allegation of infringement at rest as there is no similarity between ‘VEGGIE DELITE’ and ‘VEG LOADED REGULAR’ or between ‘SUBWAY CLUB’ and ‘TORTA CLUB’. In this regard, it is to be noted that both ‘Veg’ and ‘Club’ which are the common elements in the rival marks, are public juris.
7. With regard to similarities alleged by Subway, such as the layout of restaurants, counters, uniforms, etc, that cannot be a ground for injunction as no claim of exclusivity in respect of the décor or layout of premises or staff uniforms, is available in Indian law. Moreover, as Infinity Food has already modified the layout and other alleged similarities, the question does not arise for consideration.

The Court dismissed the injunction application filed by Subway in light of the above findings.

Our comment

The décor or layout of the premises, colour scheme and the staff uniform may be protectable as a trade dress of a restaurant under common law remedy of passing off. Though, the claimant will have to show goodwill and reputation in the elements and satisfy the criteria for passing off.