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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]

News

Registration of Foreign Food Manufacturing Facilities Mandated by FSSAI

The Food Safety and Standards Authority of India (“FSSAI”) has issued a notification dated October 10, 2022, mandating compulsory registration of foreign food manufacturing facilities as per Regulation 18(1) of the Food Safety and Standards (Import) First Amendment Regulations, 2021, with effect from February 1, 2023.

Facilities manufacturing food under the categories of milk, meat, poultry, fish, egg powder, infant food, nutraceuticals, and related products are required to register themselves with the FSSAI mandatorily.

In addition, competent authorities of exporting countries are required to provide the FSSAI with a list of existing manufacturers intending to export the specified food products to India to register the facility. The facilities shared in the list will be registered by the FSSAI at its portal.

The circular was issued to raise the quality requirements of products shipped to India in line with international standards for food and safety.

News

FAQs Released on E-filing of Form 27C Under Section 206C(1A)

Section 206C (1) of the Income Tax Act 1961 (“Act”) requires the collection of tax at source (“TCS”) by sellers dealing in the sale of alcoholic liquor for human consumption, tendu leaves, timber, any other forest produce, scrap and minerals, whether coal or lignite or iron-ore.

Sub-section (1A) of the said section provides that the seller shall not collect TCS from a resident buyer who furnishes a declaration to the effect that the specified goods are to be utilised for the purposes of manufacturing, processing, or producing articles or things or for the purposes of generating power and not for trading purposes. The format of the declaration to be furnished by the buyer is provided in Part-I of Form 27C.

Sub-section (1B) of the said section provides that the seller who receives such a declaration from the buyer shall file a copy of such a declaration with the Principal Commissioner / Commissioner, on or before the 7th day of the next following month in which such a declaration is furnished to him by the buyer.

Recently, the Income Tax authorities have released FAQs to clarify the procedure involved in filing Form 27C by the seller.

The FAQ clarifies that:

  1. It is the responsibility of the seller to file Form 27C on the E-filing portal.
  2. The buyer is required to manually fill Part-I of Form 27C and submit it to the seller.
  3. For the filing of Form 27C on the E-filing portal, the seller should have an active TAN and it should be registered on the E-filing portal.
  4. The procedure to be followed by the seller while filing Form 27C is as under:
    • Login to the Income Tax Portal (incometax.gov.in) using the TAN as the user ID.
    • Navigate to e-file >> Income Tax Forms >> File Income Tax Forms >> Persons not dependent on any Source of Income (Source of Income not relevant) >> Form 27C.
    • Fill the details in “Part I: Details of the Buyers” and “Part II: Details of the Seller, Attachments, and Verification.”
    • The seller shall scan, and upload Part-I of the form as received from buyers as attachments under “Part II- Details of seller, Attachments and Verification” of the online form before filing Form 27C.
  5. Following documents/details are required to file Form 27C:
    • Details of the buyers (Name, PAN/Aadhar, Address, Status, Email Id, Mobile No, Nature of Business, Nature of Goods and Purpose of utilizing the Goods) shall be provided for each Buyer
    • Date on which a declaration is furnished
    • Date of debiting of the amount payable by the buyer to the account of the buyer or receipt of the amount payable from the buyer in cash or by issue of a cheque or draft or by any other mode
    • Self-certified copies of the declaration made by the buyers stating that the goods purchased are not to be used for trading purposes.

FMA Comment: The above FAQs provide much-needed procedural clarity to buyers and sellers in fulfilling their statutory obligations w.r.t. filing Form 27C under the extant provisions of Sec. 206C (1A & 1B).

News

FSSAI Suspends License of Food Business Operators for Non-Compliance with Labelling Regulations

The licenses of sixteen Food Business Operators (FBOs) were suspended for non-compliance with the Food Safety and Standards Authority of India’s (FSSAI) rules on menu labelling.

The packaging and labelling regulations were mandated by the FSSAI to control the quality of the products being sold in the market and to promote consumer awareness. While sixteen FBOs lost their licenses, more than seventy others were provided with an extension to ensure compliance.

Starting July 1, 2022 (extended from the earlier date of January 1, 2022), the FSSAI mandated that food service establishments with central licenses or outlets in 10 or more locations must mention the calorific value (in kcal per serving and serving size) against the food items on their menu cards.

Further, rule 2.4.6 of the Food Safety and Standards (Packaging and Labelling) First Amendment Regulations, 2020, required FBOs to provide information about the nutrition, allergens, component ingredients, etc., in their food products.

The rules also stated that allergens might be depicted using symbols for convenience. In addition, e-commerce FBOs were required to source the information and provide it on their websites wherever applicable.