This article is written by R. Jemima Christy Rebekah, IFIM Law School, Final Year BBA LLB student during an internship at LeDroit India.
Introduction
The intriguing trademark infringement case of Subway IP LLC v. Suberb concerns customer perception, brand identification, and trademark enforceability in India. This case is essential to understanding how the Indian legal system applies the trademark law concepts of passing off, misleading resemblance, and brand dilution. Let us examine the case’s particulars, the court’s interpretation, and how it affects Indian trademark law.
Background
The company “Subway” was founded in the US and managed a popular chain of eateries under the same name all over the world. The words “SUBWAY CLUB” and “vegetarian DELITE,” which they used to refer to their club sandwich and vegetarian sandwich, respectively, were registered in India.
The plaintiff’s licenses, to which the plaintiff had granted franchise rights for its stores, were owned by the defendants, Infinity Food & Ors., a joint venture company. The Defendants started supplying the Plaintiff’s goods through its stores in 2019.
The following actions are alleged to be violations of the Plaintiff’s intellectual property rights by the Defendant:
1. The use of the “SUBWAY” brand name and logo, along with a matching colour scheme of green and yellow, to distinguish the two eateries under the defendants’ control.
2. The use of the terms “SUB ON A CLUB” and “VEGGIE DELICIOUS,” which were misleadingly like the Plaintiff’s registered trademarks “SUBWAY CLUB” and “VEGGIE DELITE”.
In addition to similar or identical signs, outlet designs, menu cards, and staff attire, the same or similar meal menus and paper napkins are used. use of wall art and pictures that were exact replicas of the plaintiff’s registered trademarks in their establishments.
In order to convince the plaintiff that they were no longer violating the plaintiff’s intellectual property rights, the Delhi High Court allowed the defendants to make any necessary revisions. In addition to changing the titles of the articles in question, the defendants changed the emblem’s colour scheme. The Plaintiff, however, filed a motion for an interim injunction because they were unhappy with the changes.
Issue
Whether it was still possible to claim that the Defendants were infringement on the Plaintiff’s registered brand in spite of the modifications they made.
Arguments by the parties
Before approving the afore-mentioned changes, the Plaintiff claimed that the Defendants’ shortcomings were clear. Additionally, the Plaintiff asserted that the Defendants’ primary goal was to assert copyright over the Plaintiff’s goodwill.
Citing and Ruston and Hornsby Ltd v. The Zamindra Engineering Co. (1969) 2 SCC 727, the plaintiff argued that the terms SUBWAY and SUBERB were deceptive to one another notwithstanding the word marks. As a result, the afore-mentioned markers would still seem very comparable even if their colour scheme were altered. Furthermore, the plaintiff claimed that because the defendants owned its franchisees, this amounted to wilful deceit and conferred an automatic right to an injunction remedy.
According to the Defendants, however, the Plaintiff’s claims of passing off and infringement are no longer valid because of the changes they made. The defendants also told the High Court that they had changed the colour of their emblem, changed the businesses’ interior design, and taken down the pictures and artwork that the plaintiff did not want on the walls. Additionally, they contended that menu cards and staff clothes were altered to differ from those worn by the Plaintiff. The defendants further asserted that the “S” in the defendant’s mark no longer resembled the “S” in the plaintiff’s design due to a change in colour scheme. The defendants referenced the Supreme Court’s rulings in Bigtree Entertainment Pvt Ltd v. Brain Seed Sportainment Pvt Ltd [2018 (73) PTC 115 (Del)] and J.R. Kapoor v. Micronix India [1994 Supp (3) SCC 215]. to bolster their claims.
Legal Provisions Referenced:
Section 29 of the Trademarks Act, 1999 – Deals with trademark infringement by use of a mark that is identical or deceptively similar.
29. Infringement of registered trademarks.
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of
(a) its identity with the registered trademark and the similarity of the goods or services covered by such registered trademark; or
(b) its similarity to the registered trademark and the identity or similarity of the goods or services covered by such registered trademark; or
(c) its identity with the registered trademark and the identity of the goods or services covered by such registered trademark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trademark.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which
(a) is identical with or similar to the registered trademark; and
(b) is used in relation to goods or services which are not similar to those for which the trademark is registered; and
(c) the registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trademark.
(5) A registered trademark is infringed by a person if he uses such registered trademark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trademark, or offers or supplies services under the registered trade mark.
(c) imports or exports goods under the mark; or
(d) uses the registered trademark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labeling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trademark is infringed by any advertising of that trademark if such advertising
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trademark.
(9) Where the distinctive elements of a registered trademark consist of or include words, the trademark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.[1]
Section 27 of the Trademarks Act, 1999 – Provides for remedies for passing off in cases of unregistered trademarks.
27. No action for infringement of unregistered trademark.
(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trademark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.[2]
Findings and Judgment
Even though both titles had two syllables, the High Court determined that “SUBERB” and “SUBWAY” were not phonetically comparable and that the Defendants’ mark “SUBERB” did not infringe upon any of the Plaintiff’s word marks or device marks. When used in reference to sandwiches, the original form of the moniker “SUB” was widely used and was widely understood to stand for “Submarine,” a popular variation of long-bodied sandwiches that were typically six or nine inches in length.
The Plaintiff cannot be granted exclusivity over the “SUB” component of its registered “SUBWAY” mark since “SUB” was public juris when used in relation to these restaurant chains. Moreover, it seemed that “WAY” and “ERB” had nothing in common once the “SUB” part of the “SUBWAY” mark was eliminated.
According to Section 29 of the Trade Marks Act of 1999, the High Court further stated that only registered trademarks are subject to infringement. Both the word mark and the device mark “SUBWAY” became protected due to the Plaintiff’s previous registrations. Since it had no other registered trademarks, it was required to protect the Plaintiff’s trademark from infringement. The High Court further pointed out that since Section 17(2) of the Act prohibits trademark dissolution, it is impossible to allege infringement for any element that is widely used in the market or otherwise lacks distinctiveness or to assert exclusivity for a specific aspect of the mark.
Section 17: Effect of registration of parts of a mark.
(2) Notwithstanding anything contained in sub-section (1), when a trade mark
(a) contains any part
(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character,
the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered[3]
The Defendants’ modified red and white “SUBERB” mark could not have been confused with the Plaintiff’s device mark, the High Court decided. The changes made to the two marks, “VEG LOADED REGULAR” and “TORTA CLUB,” would further refute any claims of infringement because the terms “CLUB” and “VEG” are public juris. The High Court decided that the Plaintiff’s move for an interim injunction cannot be granted due to the lack of evidence supporting the request for an injunction and passing off, based on the Defendants’ modifications.
Conclusion
Subway v. Suberb, a landmark case in Indian trademark law, maintains the court’s watchfulness in protecting well-known trademarks against deceptive similarities that can mislead consumers or erode brand identity. The decision serves as a guide for businesses putting distinctive branding ideas into practice and emphasizes the importance of originality and good faith in brand identification. India is becoming a more competitive market due to the substantial number of both domestic and foreign rivals. Brand owners are reminded by this case to prioritize unique branding to avoid infringing on others’ intellectual property rights.
Reference
- Subway Vs. Suberb: The Deceptive Similarity In Trademark Law- LiveLaw
- “SUBWAY” and “SUBERB” not phonetically and deceptively similar; Delhi High Court dismisses Subway’s plea for injunction for its mark “SUBWAY” against Infinity Food’s mark “SUBERB”- SCConline
[1]THE TRADE MARKS ACT, 1999, India Code, ARRANGEMENT OF SECTIONS, 17-9-2021 https://www.indiacode.nic.in/bitstream/123456789/1993/1/A1999-47.pdf
[2] THE TRADE MARKS ACT, 1999, India Code, ARRANGEMENT OF SECTIONS, 17-9-2021 https://www.indiacode.nic.in/bitstream/123456789/1993/1/A1999-47.pdf
[3] THE TRADE MARKS ACT, 1999, ARRANGEMENT OF SECTIONS, 17-9-2021
