Introduction 

• This is a landmark judgment relating to infringement of trademark.      
• This judgment was delivered by a single judge bench comprising of Justice C. Hari Shankar. 

Facts 

• The plaintiffs in this case assert exclusivity over the word and device marks ‘Subway’, ‘Veggie Delite’ and ‘Subway Club’. 
• Defendant no 1 Infinity Foods LLP is a partnership firm of which Defendants 3 and 4 are partners. 
• Defendant 3 and 4 are licensees of plaintiff to whom plaintiff has granted right to franchise the plaintiff’s outlets. 
• It is the case of the plaintiff that the defendant is infringing the intellectual property rights of the defendants with respect to the brand name (“SUBERB”) and the logo.  
• The plaintiff has filed an application under Order XXXIX Rule 1 and 2 of Civil Procedure Code, 1908 (CPC) for grant of relief of injunction. 

Issue Involved

• Whether the plaintiffs are liable to get the relief of interim injunction on the ground of infringement of trademark of the plaintiff? 

Observation 

• Rule of Anti Dissection 
  • It is to be noted that Section 17 (2) of the Trade Marks Act, 1999 (TMA) does not permit dissection of the trademark and claiming exclusivity in respect of a part of the mark. 
  • However, there is an exception to the above anti dissection rule as laid down in South India Beverages Pvt Ltd v. General Mills Marketing Inc (2015) wherein the Court held that anti dissection rule will be ignored where:  
    • Part of the mark constitutes a dominant feature and is distinctive in nature ,or 
    • Part of the mark has acquired secondary meaning by dint of long usage. 
  • Thus, the Court may examine whether a part of the plaintiff’s mark which constitutes a dominant part stands so infringed by the defendant’s mark.  
• “SUBWAY” and “SUBERB” 
  • The Court observed that the two words ‘subway’ and ‘suberb’ are not phonetically similar. 
  • Further, it was observed that the first syllable ‘Sub’ is commonly used in the context of sandwiches and is an abbreviation of ‘Submarine’ which represents a well known variety of long-bodied sandwiches. 
  • Thus, the Court held that no exclusivity can be claimed over the first part of the alleged infringed trademark i.e. ‘SUB’ as it is publici juris. 
  • Therefore, the two trademarks are not deceptively similar because ‘SUB’ is publici juris and common to trade and ‘WAY’ and ‘ERB’ are neither phonetically similar nor otherwise similar.  
  • Further, the Court also held that the defendant has not been able to prove that the brand ‘SUBWAY’ is so well known that a person who wishes to partake from a ‘SUBWAY’ outlet would walk into an outlet of defendant and partake from there. 
  • Also, the class of customers to whom the business is catering to must also be considered. 
  • Thus, the Court held that the defendant’s ‘SUBERB’ mark does infringe upon the plaintiff’s ‘SUBWAY’ mark.  
• Infringement of “S” Logo 
  • The Court held that the plaintiff does not hold any Indian or WIPO registration in respect of the “S” logo. 
  • Further, it was observed by the Court that there was no similarity between the “S” marks of the plaintiff and defendant. 
  • Thus, the Court held that there was no infringement. 
• Passing off 
  • Passing off is a non-statutory tort relatable to common law. 
  • In order to establish the commission of this tort it has to be proved that a person of average intelligence and imperfect recollection would confuse the goods and services of the defendant with that of the plaintiff. 
  • In the present fact the same cannot be proved hence the tort of passing off was not proved. 
• Thus, the Court in the present facts dismissed the prayer for interim injunction. 

Conclusion 

• The Court in this case reiterated that if the part of the mark is publici juris or common to trade it would not be granted protection under the Trademarks Act. 
• Thus, in order to prove infringement, it has to be proved that the two words are phonetically or otherwise deceptively similar. 

[Original Judgment]