What constitutes a trademark violation: Subway vs Suberb in Delhi High Court

Source: The post is based on the article “What constitutes a trademark violation: Subway vs Suberb in Delhi High Court” published in Indian Express on 21st January 2023.

What is the News?

The Delhi High Court has ruled that Subway cannot claim “exclusivity” or “monopoly” over “sub”, the first part of its trademark “Subway” when used in the context of eateries which serve sandwiches and similar items. 

What was the case before the court?

Subway moved the Delhi High Court(HC) against Infinity Foods, which uses the name Suberb for its 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”.

What is a trademark?

A trademark is a symbol, design, word or phrase that is identified with a business. When a trademark is registered, its owner can claim “exclusive rights” on its use.

The Trademark Act,1999 governs the regime on trademarks and their registration. The Act 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.

About the violation of trademark

Using a registered trademark without the authorisation of the entity that owns the trademark is a violation or infringement of the trademark.

Using a substantially similar mark for similar goods or services could also amount to infringement. In such cases, courts have to determine whether this can cause confusion for consumers between the two.

There are several ways in which a trademark can be infringed. However, the trademark owner has to show that the trademark has a distinct character.

What about the deceptive similarity of trademarks?

The law states that a mark is considered deceptively similar to another mark if it nearly resembles that other mark, confusing the consumer in the process. Such deception can be caused phonetically, structurally or visually.

What about passing off trademarks?

Say, a brand logo is misspelt in a way that’s not easy for the consumer to discern. In such cases, the infringing products need not be identical — but the similarity in the nature, character, and performance of the goods of the rival traders has to be established.