Delhi HC Refuses To Retrain Sale Of Suberb Sandwiches On Lawsuit By Subway

Justice C Hari Shankar, while dealing with the lawsuit by Subway IP LLC, said 'Subway' and 'Suberb', when used in the context of eateries serving submarine sandwiches, were not "deceptively similar" and their lettering, font and appearance were also easily distinguishable from each other in the present case.

Rejecting the plaintiff's plea for interim injunction, the judge observed that 'sub' was an abbreviation for 'Submarine', which represented a well-known variety of long-bodied sandwiches and it could not be said that the defendant's 'Suberb' mark infringed the 'Subway' wordmark.

"Subway and Suberb, when used in the context of eateries serving submarine sandwiches are not, therefore, deceptively similar, as 'Sub' is publici juris (of public right) and common to the trade, and 'way' and 'erb' are neither phonetically nor otherwise similar. 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," said the court in its recent order.

"No exclusivity can be claimed by the petitioner over the first part of its registered Subway mark, i.e, 'Sub'. The plaintiff cannot claim a monopoly over all two-syllable word of which the first syllable is 'Sub', especially when used in the context of eateries which serve sandwiches and similar items," it added.

In its order, the court also observed that there was substance in the defendant's contention that the 'Subway' brand was so well known that there was hardly any chance that a person who wished to partake from a Subway outlet would walk into a Suberb outlet.

The court also rejected the plaintiff's contention with respect to the infringement of its registered trademarks 'Subway Club' and 'Veggie Delite', noting that the defendant had changed the name of its sandwiches to 'Veg Loaded Regular' and 'Torta Club' and "quite obviously" the marks could not be said to be similar.

It also said the plaintiff did not hold any registration in respect to the 'S' logo and it therefore could not allege any infringement in that regard.

The court also recorded that the defendant had 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.

- With PTI Input