Delhi HC Dismisses Subway’s Injunction Application, Says Word “SUB” is Publici Juris and Common to Trade

In an order[1] dated January 12, 2023, the Delhi High Court rejected Subway IP LLC’s application seeking an interim injunction to prevent the defendant from using the mark “SUBERB” with a yellow and green color scheme that was claimed to be identical to the “SUBWAY” mark. The court held the marks were not deceptively similar as the word “SUB” is publici juris and common to trade. It was remarked that no exclusivity could be claimed by the petitioner over one part of the trademark “SUB” because it is generally used to refer or denote to sandwiches that are 6 or 9 inches in length.

The plaintiff, Subway IP LLC operates a global chain of restaurants under the name “SUBWAY” and is represented with well-known logos. Apart from having trademark registration for the mark “SUBWAY”, the plaintiff also has trademarks registered for the device marks “Subway Club” and “Veggie Delite” which are the names of the club sandwiches sold in the Plaintiff’s restaurants.

In the year 2022, a suit was filed by the plaintiff alleging that the defendant was infringing upon their intellectual property rights by using the mark “SUBERB” with a yellow and green color scheme that was claimed to be identical to the “SUBWAY” mark. The plaintiff further contended that the use of the names “Veggie Delicious” and “Sub on a Club” by the defendant was deceptively similar to the marks registered by the plaintiff. It was claimed that the signage, décor, menu cards, napkins and staff uniforms, photographs, and wall art in the outlets were also similar to that of the plaintiff.

The matter was then adjourned in December 2022 and the defendant was asked to assess the marks and see if any modifications could be made to adhere to the plaintiff’s interests. Acceding to this, the defendant offered to modify the color combination and logo in their signage, take down the “S” logo, and change the names “Veggie Delicious” and “Sub on a Club” to “Veg Loaded Regular” and “Torta Club”.

After hearing the parties at length, the court held that the word “SUBERB” is not phonetically similar to the mark “SUBWAY” and that the common syllable “SUB” is known to represent Submarine Sandwiches. Concerning the word marks “Subway Club” and “Veggie Delite”, the court stated that it is obvious that the marks are not similar to the marks “Veg Loaded Regular” and “Torta Club”. It was also observed that the term “CLUB” is publici juris because club sandwiches are distinct and form another category of sandwiches altogether.

Since the plaintiff did not hold any trademark registration for the “S” logo, it was held that there could be no infringement alleged in this regard. Regarding passing off, the court stated that there is no likelihood that a person of average intelligence who wishes to go to a SUBWAY outlet would walk into an outlet of the defendant. Therefore, holding that there can be no case of passing off, the Delhi High Court rejected the application seeking an interim injunction against the defendant.

[1] Subway IP LLC v. Infinity Foods & Ors. [Case no. CS(COMM) 843/2022]