The Delhi High Court has refused to restrain the sale of
sandwiches under the name "Suberb" by a Delhi-based outlet, saying
the global restaurant chain Subway cannot claim monopoly over the
term "sub". The term, it said, was used widely by eateries for
submarine sandwiches.
Justice C Hari Shankar, while hearing the lawsuit by Subway IP
LLC on Monday, 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.
Rejecting Subway's plea for interim injunction against
the Delhi-based outlet, the judge said "sub" was an abbreviation for
"Submarine", which represented a well-known variety of long-bodied
sandwiches, and it could not be said 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 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.
The high 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 Subway'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. It added that the defendant had modified the decor, 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.