Subway cannot claim monopoly over use of 'Sub' in Trademarks: Delhi HC

The Delhi High Court has refused to stop a city-based outlet from selling sandwiches under the name 'Suberb,' observing that global restaurant chain Subway could not claim monopoly over all two-syllable words. In dealing with the lawsuit filed by Subway IP LLC, Justice C Hari Shankar stated that the terms "Subway" and "Suberb" when used in the context of eateries serving submarine sandwiches were not "deceptively similar," and their lettering, font, and appearance were also easily distinguishable from each other in the present case.

Rejecting the plaintiff's request for an injunction, the judge stated that'sub' was an abbreviation for 'Submarine,' which represented a well-known variety of long-bodied sandwiches, and that the defendant's 'Suberb' mark could not be said to infringe the 'Subway' wordmark.

"Subway and Suberb, when used in the context of eateries serving submarine sandwiches are not, therefore, deceptively similar, as 'Sub' is publici juris (of public right) and common to the trade, and 'way' and 'erb' are neither phonetically nor otherwise similar. "After the defendant's modifications, the appearance of the defendant's red and white mark cannot be said to be deceptively similar to any of the plaintiff's," the court stated in its recent order.

"No exclusivity can be claimed by the petitioner over the first part of its registered Subway mark, i.e, 'Sub'. The plaintiff cannot claim a monopoly on all two-syllable words, the first syllable of which is 'Sub,' especially when used in the context of restaurants that serve sandwiches and similar foods.

The court also rejected the plaintiff's claim of infringement of its registered trademarks 'Subway Club' and 'Veggie Delite,' noting that the defendant had changed the names of its sandwiches to 'Veg Loaded Regular' and 'Torta Club,' and the marks were "quite obviously" not similar.

It also stated that the plaintiff lacked any registration for the 'S' logo and thus could not allege any infringement in that regard.