A ‘sub’ is not just a Subway sandwich, the Delhi High Court ruled recently, dismissing a trademark infringement case brought by the global fast-food chain against Suberb, a Delhi-based restaurant.


What is the case?

  • Subway filed a complaint in the Delhi HC against Infinity Foods, which operates Suberb restaurants in Delhi.
  • Subway claimed that the brand name and logo “Suberb”, with a yellow and green colour scheme, was identical to its mark “Subway”.
  • Subway owns trademarks in the brand name “Subway” as a whole, as well as for its sandwiches named “Veggie Delite” and “Subway Club”.
  • Subway also claimed trademark infringement on Suberb’s menu card, outlet decor, and recipes.
  • Suberb argued that Subway is a “well-known brand”, and that a consumer would not walk into a Suberb outlet confusing it with Subway.


What did the Delhi High Court rule in this case?

  • The High Court did not look into the issue of passing off, because the Subway would have to demonstrate that a “person of average intelligence” would be confused between the goods and services of Subway and Suberb. Passing Off is a common law tort which protects the goodwill and reputation of trade mark holder against damage caused by misrepresentation by defendant.
  • “Sub” is used as an abbreviation for “submarine”, which represents a well-known variety of long-bodied sandwiches.
  • Therefore, Subway cannot claim “exclusivity” or “monopoly” over “sub”, the first part of its trademark “Subway”.
  • There was no similarity between the two other parts of the marks – “way” and “erb”. Hence, there was no likelihood of confusion to the public.
  • As the defendants had agreed to change the lettering, font and colour scheme, no case for deceptive similarity was made out.


What is Intellectual Property (IP)?

  • IP refers to creations of the mind, such as inventions, literary and artistic works, designs and symbols, names and images used in commerce.
  • IP is protected in law enabling people to earn recognition or financial benefit from what they invent or create.
  • By striking the right balance between the interests of innovators and the wider public interest, the IP system aims to foster an environment in which creativity and innovation can flourish.
  • Types of IP — Copyright, Patents, Trademarks, Industrial designs, Geographical indications (GI) and Trade secrets.
  • Governing regulations —
      • The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) — It is an international legal agreement, which establishes minimum standards for the regulation by national governments of different forms of IP.
      • IP rights in India are governed under —
          • The Trade Marks Act 1999,
          • The Patents Act 1970 (amended in 2005),
          • The Copyright Act 1957,
          • The Designs Act 2000,
          • The GI of Goods (Registration and Protection) Act 1999, etc.


What is a Trademark?

  • A trademark is a symbol, design, word or phrase that is identified with a business and when a trademark is registered, its owner can claim “exclusive rights” on its use.
  • The Trademark Act 1999 guarantees protection for a trademark that is registered with the Controller General of Patents, Designs, and Trademarks, also known as the trademark registry.
  • A trademark is valid for 10 years, and can be renewed by the owner indefinitely every 10 years. 


What constitutes a Trademark Violation?

  • Using a registered trademark without authorisation of the entity that owns the trademark is a violation or infringement of the trademark.
  • There are several ways in which a trademark can be infringed such as Deceptive similarity, passing off (Say, a brand logo is misspelt in a way that’s not easy for the consumer to discern).
  • In such cases, courts have to determine whether this can cause confusion for consumers between the two.
  • In such cases, the infringing products need not be identical, but similarity in the nature, character and performance of the goods of the rival traders has to be established. For example, Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited.