Cannot claim monopoly on the term 'sub', Delhi High Court tells Subway [17.1.2023]

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.

17 Jan 2023