Subway has no monopoly over ‘Sub', rules Delhi High Court

Representative Image

Subway has been shunted out of monopoly over all two-syllable words with 'sub' being the first one when it comes to eateries.

The Delhi High Court has passed the order, refusing an interim injunction against a Delhi-based outlet called 'Suberb' by global restaurant chain Subway.

In a trademark infringement suit initiated by Subway, the court has observed that word 'sub' was an abbreviation for 'Submarine', which is a variety of long-bodied sandwiches. According to the order, the words ‘Subway’ and ‘Suberb’, when used in the context of eateries serving submarine sandwiches are not deceptively similar. 'Sub' is common to the trade, and 'way' and 'erb' are neither phonetically similar.

“There is no likelihood, whatsoever, of a person of average intelligence, who desires to partake of food from a ―Subway outlet, walking, instead, into an outlet of the defendants (Suberb),” Justice Hari Shankar observed in his order from January 12. Thus holding that it cannot be said that the ‘Suberb’ mark infringes either the ‘Subway’ word mark or any of ‘Subway’ device marks.

According to the order, the court had in December 2022 granted time to Suberb to examine whether they can make certain modifications so as to satisfy Subway that they were not infringing its trademarks. Subsequently, Suberb agreed not to use the yellow and green colours used in Subway signage or the ‘S’ logo, while also stating that they will pull down the websites which have copied the text found on Subway’s portal.

They further agreed to change the names of dishes such as ‘Veggie Delicious’ and ‘Sub on Club’, to ‘Veg Loaded Regular’ and ‘Torta Club’ to dispel any confusion. Suberb also informed the court that they had modified the décor, layout, wall hanging, menu cards and uniforms of the staff so as to not to retain any similarity with the Subway.

Upon considering all the changes carried out by Suberb, the court observed: “The law in this country does not allow grant of an injunction merely on the ground that décor, layout or appearance of restaurants of two different entities are similar. No claim of exclusivity in respect of the décor or layout of premises or menu cards, or staff uniforms, is available in Indian law.”

The court concluded that even if these features were similar, an injunction cannot be sought for by Subway, however, in view of the modifications that Suberb has carried out, this issue does not survive for consideration. “There is, as things stand now, no similarity between the defendants and the plaintiff even on these aspects,” the court said.