Subway IP LLC v. Infinity Food & Ors.

Summary:
In this case review, the plaintiff, a U.S.-based company operating a wellknown global chain of restaurants under the nameSUBWAY‘, filed an infringement suit alleging that the Defendant‘s brand name and logoSuberb with its colour combination of yellow and green is identical to their markSubway,” as well as that the names of their sandwiches are deceptively similar to those of Subway. The Court adjourned to allow the Defendants to make modifications to avoid infringing upon Plaintiff‘s trademark. After modifications, including changing colours and sandwich names, were made by the Defendants, Plaintiff filed for an interim injunction once more. However, the Court ultimately dismissed Subway’s application for an interim injunction due to them making changes within a week and not using infringing marks; they recognized that Subway could not monopolize the common syllable “sub” associated with sandwiches, nor did they find evidence of passing off goods or services by Subway due to their well-known brand.
Facts of the Case:
The Plaintiff, a U.S.-based company operating a well-known global chain of restaurants under the name ‘SUBWAY’, holds registration over the word and device mark ‘SUBWAY’ as well as their sandwich names ‘SUBWAY CLUB’ and ‘VEGGIE DELITE’. Defendant 1, Infinity Foods LLP is a partnership firm to which Defendants 3 and 4 are partners, who hold the license to operate a franchise of the Plaintiff’s restaurant. The Plaintiff filed an infringement suit against Infinity Foods LLP alleging that the Defendant’s brand name and logo “Suberb” with its colour combination of yellow and green is identical to their mark “Subway,” as well as that the names of their sandwiches “Veggie Delicious” and “Sub on a Club” are deceptively similar to their own “Veggie Delite” and “Subway Club,” in addition to similarities found in signage, outlet décor, menu cards, paper napkins, and staff uniforms. Plaintiff prayed for an interim injunction against the Defendants. At the request of the Defendants, the Court adjourned so they could carry out modifications that would not infringe upon the Plaintiffs’ trademark. The Defendants sent a mail proposing modifications that included changing of colour combinations used in signage outside their restaurants to combinations including purple, pink, white or red; changing the colour of their logo to one or more colours from purple, pink, white or red; avoiding the use of either yellow or green colours in signage or logo; taking down a website containing copied text from the Plaintiff’s website; and changing names of sandwiches from “Veggie Delicious” and “Sub on a Club” to “Veg Loaded Regular” and “Torta Club”. Plaintiff was unsatisfied with these changes, however, prompting them to again file for an interim injunction against Defendant.
Contentions of the Defendants:
The defendants have taken down their website and are reconstructing it with new elements that differ from the plaintiff’s website. The defendants claim they have fulfilled all modifications proposed in their mail and now it cannot be considered an infringement or passing off. Moreover, the defendants assert that the plaintiff cannot claim a monopoly over the initial “Sub” part of the “SUBWAY” mark, as “Sub” is generic with respect to the products associated with it.
Contentions of the Plaintiff:
Plaintiff contends that, before the Defendants made modifications, the infringement committed was obvious and that their intention to do so was to harm the goodwill of Plaintiff and act in bad faith. Plaintiff submits that both word marks SUBWAY and SUBERB are deceptively similar to each other, even if the colour scheme is changed. Furthermore, as the Defendants are a franchisee holder of the Plaintiff, this is a case of rank dishonesty, thus claiming an injunctive relief.
Judgement:
The court held that the defendant’s mark “Suberb” was not phonetically similar to the plaintiff’s mark “Subway”, even though both are words of two syllables. They stated that the common syllable “sub” could not be monopolized by the plaintiff, particularly when used for sandwiches, as it had been derived from the word “submarine” for representing long-bodied sandwiches. The court also noted that once the first part of the mark was out of the way and could not be monopolized, the other part of the mark, ‘way’, did not indicate any similarity to the defendant’s other half of their mark, ‘erb.’ Additionally, they pointed out that after modifications made by the defendant, there was no point of infringement, as they had changed both their sandwich name and their colour scheme from red and white. The court also highlighted that there was no passing off of goods or services by Subway as their brand is so well-known that a common man would have no difficulty distinguishing between them and the defendant’s outlet. Therefore, they ultimately dismissed Subway’s application for an interim injunction against the defendant due to them making changes within a week and not using infringing marks.

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