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2023 SCC OnLine Del 150

In the High Court of Delhi at New Delhi

(BEFORE C. HARI SHANKAR, J.)

Subway IP LLC … Plaintiff;

Versus
Infinity Food and Others … Defendants.
CS(COMM) 843/2022
Decided on January 12, 2023
Advocates who appeared in this case:
Mr. Sandeep Sethi, Sr. Advocate with Mr. Peeyoosh Kalra, Mr. Gaurav
Mukerjee and Mr. Suyash Malhotra, Advs.
Mr. Pushkar Sood, Mr. K.P. Singh, Mr. Anshuman Sood, Mr. Keshav
Rai, Mr. Vishwajeet Singh, Mr. Tarkar and Mr. Rishabh Singh, Advs.
The Order of the Court was delivered by
C. HARI SHANKAR, J.:—
I.A. 20529/2022 (Order XXXIX Rules 1 and 2 of the CPC)
1. This judgement provides the reasons for the order in this case,
which was pronounced on 9th January 2023.
2. The plaintiff Subway IP LLC is a Company incorporated in the
State of Delaware, U.S., which operates a well-known global chain of
restaurants under the name ‘SUBWAY’, with the name being
represented with the well-known logos and . The
plaintiff is the properietor, in India, of registrations not only of the
‘SUBWAY’ word and device marks, but also of ‘SUBWAY CLUB’ and
‘VEGGIE DELITE’, being the names allotted by the plaintiff to its club
sandwich and vegetable sandwich respetively. The plaintiff holds the
following trade mark registrations in India:
S. No. Trade Registration Class Date of Valid till
Mark No. application
1 SUBWAY 513704 30 20th July 7th April
1989 2025
2 SUBWAY 513705 32 20th July 7th April
1989 2023
3 1347782 42 30th March 30th
2005 March
2025
4 SUBWAY 1349577 42 7th April 7th April
2005 2025
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5 SUBWAY 1933097 29 9th March 9th March

2010 2030
6 IRDI- 29, 13th January 13th
3597627 30, 2017 January
32, 20271
35,
43
7 IRDI- 29, 13th January 13th
3642913 30, 2017 January
32, 20271
35,
43
8 IRDI- 29, 13th January 13th
3649570 30, 2017 January
32, 20271
35
9 SUBWAY 5249508 29, 16th 16th
CLUB 30 December December
2021 2031
10 VEGGIE 1750661 29, 4th 4th
DELITE 30 November November
2008 2028
3. Copies of the registrations have been placed on record. The
defendant does not dispute the proprietorship, by the plaintiff, of the
aforesaid registered trade marks.
4. The plaintiff, therefore, asserts exclusivity over the word and
device marks SUBWAY, , VEGGIE
DELITE and SUBWAY CLUB.
5. Defendant 1 Infinity Foods LLP is a partnership firm of which
Defendants 3 and 4 are partners. Defendants 3 and 4 are licensees of
the plaintiff, to whom the plaintiff has granted the right to franchise the
plaintiff's outlets vide agreement dated 30th May 2019. Since then,
Defendants 3 and 4 have, through the outlets owned by them, been
serving and distributing the products of the plaintiff. Recitals A and B in
the franchise agreement dated 30th May 2019, on which Mr. Sethi
learned Senior Counsel for the plaintiff places reliance, read as under:
“A. Subway IP LLC, a Delaware limited liability company with a
principal office in Doral, Florida, USA (“SIP”) owns a proprietary
system for establishing and operating restaurants featuring
sandwiches, pizza and salads under the trade name and service
mark Subway* (the “System”). The system was developed
spending considerable money, time, and effort. The System
includes the trademark Subway*, other trademarks, trade names,
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service marks, commercial announcements (slogans) and related

insignia (logos) SIP name [the “Marks”]. The System also includes
confidential information and goodwill. The parties acknowledge
that SIP owns the Marks registered with the India Trade Mark
Registry, including the trademark “Subway” in international
classes 30 and 32 on July 20, 1989 under registration numbers
513704 and 513705, respectively; “Subway & Design” in class 42
on March 27, 2007 under registration number 1347782; “Subway”
in international class 42 on August 7, 2008 under registration
number 1349577; and “VEGGIE DELITE” in classes 29 and 30 on
May 18, 2015 under registration number 1750661.
B. SIP granted a non-exclusive license to Subway International B.V.,
a Netherlands limited liability company (“Licensor”) to use the
System in countries outside the United States of America,
Canada, Australia, Colombia and Brazil to establish and sublicense
others to establish Subway* restaurants. Licensor granted a
sublicense to us.”
6. The plaintiff alleges that the following acts of Defendant 1 infringe
the plaintiff's intellectual property rights:
(i) the use of the brand name and logo under which the
two restaurants run by Defendant 1 in Delhi operate, with an
identical yellow and green colour scheme,
(ii) the use of the brands VEGGIE DELICIOUS and SUB ON A CLUB
which, according to the plaintiff, are deceptively similar to the
plaintiff's registered VEGGIE DELITE and SUBWAY CLUB marks,
(iii) usage of identical, or substantially similar, signage, outlet
décor, menu cards, paper napkins and staff uniforms,
(iv) use of photographs and wall art, in their outlets, which are
similar to the photographs and wall art in the plaintiff's outlets,
(v) use of food preparation procedures, techniques, service
ingredients, formulae, recipes, ingredients, and placement of
the service counters in the restaurants identical to that seen in
the plaintiff's outlets, and
(vi) verbatim reproduction, on the defendants’ website, of the
recitals in the plaintiff's website, with similar layout of
headings etc.
7. At request of learned Counsel for the defendants, this Court, on
21st December 2022, adjourned this matter to enable the defendants to
examine whether they could carry out modifications which would satisfy
the plaintiff that they were no longer infringing the plaintiff's
intellectual property rights.
8. The defendants, thereafter, addressed e-mail dated 22nd
December 2022, to the plaintiff, offering to make certain changes in
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their logo/lay out, etc., which would assuage the grievance of the
plaintiff regarding infringement of its intellectual property rights by the
defendants. Specifically, the defendants offered to (i) change the colour
combination used in the signage outside their restaurants to a
combination of purple, pink, white or red, (ii) change the colour of the

logo (“the S logo” hereinafter) to a combination of one or more of

the colours purple, pink, white or red, (iii) not to use yellow or green
either in the aforesaid signage or the S logo, (iv) pull down the
websites of the defendants which copied the text found on the website
of the plaintiff and (v) change the names “VEGGIE DELICIOUS” and
“SUB ON A CLUB”, by which they designated their sandwiches to “VEG
LOADED REGULAR” and “TORTA CLUB”.
9. The plaintiffs, however, vide e-mail dated 22nd December 2022,
responded thus:
“Dear Mr. Sood,
This is with reference to the captioned matter and your email
below, contents whereof we have relayed to our client.
Regrettably, your client's proposal does not address the issue of

their use of the objectionable marks SUBERB the

trade dress/colour scheme/get-up/layour identical to that of
restaurants under our client's mark/name SUBWAY and/or elements
of their SUBWAY System etc. Consequently the proposal forwarded
by you on behalf of your clients, is not acceptable to our client and
we shall be proceeding with the matter tomorrow before the Hon'ble
High Court.
Yours sincerely,
Gaurav Mukerjee
Counsel for the Plaintiff”
10. This is the situation which now prevails.
11. In these circumstances, I have heard learned Counsel on the
present IA 20529/2022, which this order proceeds to decide.
12. Before proceeding further, it would be appropriate to reproduce,
here, the “before” and “after” pictures, to depict the changes that the
defendants have undertaken in order to satisfy the grievance of the
plaintiff, thus:
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13. Insofar as the website of the defendants is concerned, Mr.

Pushkar Sood, learned Counsel for the defendants submits that the
defendants have taken down all their websites and is reconstructing
their website at present. As such, he submits that, if one were to seek
to access the defendants’ website, the following message would
appear:
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Rival Submissions
14. Mr. Sandeep Sethi, learned Senior Counsel for the plaintiff,
submits that his client is not satisfied with the changes that the
defendants have undertaken, as noted hereinabove.
15. Mr. Sethi sought to submit that the acts of infringement
committed by the defendant before they agreed to undertake
modifications as noted above, were blatant. The intent of the
defendants to copyright on the plaintiff's goodwill is, therefore, he
submits, transparent. He, in the circumstances, invokes the following
principle laid down by Lord Lindley in Slazenger & Sons v. Feltham &
Co.2 :
“One must exercise one's common sense, and, if you are driven to
the conclusion that what is intended to be done is to deceive if
possible, I do not think it is stretching the imagination very much to
credit the man with occasional success or possible success. Why
should we be astute to say that he cannot succeed in doing that
which he is straining every nerve to do?”
16. Citing Slazenger2 , Mr. Sethi exhorts the court not to grant any
relief to the defendants.
17. Mr. Sethi, further relying on the decisions in Ruston and Hornsby
Ltd. v. The Zamindra Engineering Co.3 , Parle Products (P) Ltd. v. J.P. &
Co.4 and Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia5 , submits
that the marks SUBWAY and SUBERB are deceptively similar to each
other even as word marks. As such, he submits that even if the colour
scheme of the said marks is to be changed, the marks would continue
to remain deceptively similar. He also cited, in this context, three
decisions of the High Court of Ontario in Mr. Submarine Ltd. v. Bikas6 ,
Mr. Submarine Ltd. v. Emma Foods7 and Mr. Submarine v. Haralambos
Voultsos8 , apart from the decision of T.S. Thakur, J. (as he then was,
sitting singly as a Judge of this Court) in Motorpresse International
Verlagsgeselischaft Holding mbH & Co. v. Mistrale Publishing Pvt. Ltd.9 .
Mr. Sethi submits that, as the defendants were a franchisee holder of
the plaintiff, this is a case of rank dishonesty, entitling the plaintiff to
injunctive relief ipso facto.
18. Mr. Pushkar Sood, appearing for the defendants submits, per
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contra that, with the changes that the defendants have volunteered to
make, the allegation of infringement and passing off, levelled by the
plaintiff, can no more sustain. He submits that the defendants have
only two outlets, at Shalimar Bagh, Delhi and at Gurgaon, and have
already implemented these changes at both the outlets. He further
submits that the defendants have even changed the wall décor of their
outlets, and removed the photographs and images, on the walls, to
which the plaintiff objected. The menu card and staff uniforms of his
clients, too, he submits, had been changed so as not to resemble those
of the plaintiff. With the change in colour scheme, the ‘S’ sign of the
defendant, he submits, no longer resembles the ‘S’ sign of the plaintiff.
The plaintiff cannot, he submits, claim any exclusivity in respect of the
initial ‘Sub’ part of the ‘SUBWAY’ mark, as ‘Sub’ is generic with respect
to the products in relation to which it is used. He relies on the
judgement of the Supreme Court in J.R. Kapoor v. Micronix India10 and
of a coordinate Single Bench of this Court in Bigtree Entertainment Pvt.
Ltd. v. Brain Seed Sportainment Pvt. Ltd.11 .
Analysis
19. This Court is presently concerned, in the application filed by the
plaintiff under Order XXXIX Rules 1 and 2 of the CPC, with whether,
after the modifications that the defendants have undertaken, the
defendants can still be said to be infringing the plaintiff's registered
trade mark, or passing off their goods and services as those of the
plaintiff, so as to entitle the plaintiff to an injunction.
20. Infringement, under Section 29(1) to (5)12 of the Trade Marks
Act, can only be of registered trade marks. The marks of which the
plaintiff has subsisting registrations, which are entitled, consequently,
to protection under Section 28 of the Trade Marks Act, are:
(i) the word mark SUBWAY,
(ii) the device mark ,
(iii) the device mark ,
(iv) the device mark and
(v) the device mark .
21. The plaintiff has no other registered trade mark, to which it is
entitled to protection against infringement from this Court.
22. Section 17(2) of the Trade Marks Act does not permit:
(i) dissection of a trade mark and claiming of exclusivity in respect of
part of the mark (“the anti-dissection rule”), or
(ii) claiming of infringement in respect of any matter which is
common to the trade or otherwise of a non-distinctive character
(publici juris).
23. The judgement of a Division Bench of this Court in South India
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Beverages Pvt. Ltd. v. General Mills Marketing Inc.13 has, however,

subjected the anti-dissection rule to a caveat, where part of a mark
constitutes its dominant feature and is distinctive in nature, or has
acquired secondary meaning by dint of long usage. The relevant
passages from the decision may be reproduced thus:
“The Rule of Anti-Dissection
16. This rule mandates that the Courts whilst dealing with cases
of trademark infringement involving composite marks, must consider
the composite marks in their entirety as an indivisible whole rather
than truncating or dissecting them into its component parts and
make comparison with the corresponding parts of arrival mark to
determine the likelihood of confusion. The raison d'tre underscoring
the said principle is that the commercial impression of a composite
trademark on an ordinary prospective buyer is created by the mark
as a whole and not by its component parts [Fruit of the loom, Inc. v.
Girouard14 ; Autozone, Inc. v. Tandy Corporation15 ].
*****
The Identification of ‘Dominant Mark’
19. Though it bears no reiteration that while a mark is to be
considered in entirety, yet it is permissible to accord more or less
importance or ‘dominance’ to a particular portion or element of a
mark in cases of composite marks. Thus, a particular element of a
composite mark which enjoys greater prominence vis-à-vis other
constituent elements, may be termed as a ‘dominant mark’.
20. At this juncture it would be apposite to refer to a recent
decision of this Court reported as Stiefel Laborataries v. Ajanta
Pharma Ltd.16 The Court whilst expounding upon the principle of ‘anti
-dissection’ cited with approval the views of the eminent author on
the subject comprised in his authoritative treatise-McCarthy on
Trademarks and Unfair Competition. It was observed:
“41. The anti-dissection rule which is under these
circumstances required to be applied in India is really based upon
nature of customer. It has been rightly set out in McCarthy on
Trademarks and Unfair Competition about the said rule
particularly in Para 23.15 which is reproduced hereunder:
23.15 Comparing
Marks : Differences v. Similarities
[1] The Anti-Dissection Rule
[a] Compare composites as a Whole : Conflicting composite
marks are to be compared by looking at them as a whole, rather
than breaking the marks up into their component parts for
comparison. This is the “anti dissection” rule. The rationale for the
rule is that the commercial impression of a composite trademark
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on an ordinary prospective buyer is created by the mark as a

whole, not by its component parts. However, it is not a violation of
the anti-dissection rule to view the component parts of conflicting
composite marks as a preliminary step on the way to an ultimate
determination of probable customer reaction to the conflicting
composites as a whole. Thus, conflicting marks must be compared
in their entireties. A mark should not be dissected or split up into
its component parts and each part then compared with
corresponding parts of the conflicting mark to determine the
likelihood of confusion. It is the impression that the mark as a
whole creates on the average reasonably prudent buyer and not
the parts thereof, that is important. As the Supreme Court
observed:“The commercial impression of a trademark is derived
from it as a whole, not from its elements separated and
considered in detail. For this reason it should be considered in its
entirety.” The anti-dissection rule is based upon a common sense
observation of customer behaviour : the typical shopper does not
retain all of the individual details of a composite mark in his or her
mind, but retains only an overall, general impression created by
the composite as a whole. It is the overall impression created by
the mark from the ordinary shopper's cursory observation in the
marketplace that will or will not lead to a likelihood of confusion,
not the impression created from a meticulous comparison as
expressed in carefully weighed analysis in legal briefs. In litigation
over the alleged similarity of marks, the owner will emphasize the
similarities and the alleged infringer will emphasize the
differences. The point is that the two marks should not be
examined with a microscope to find the differences, for this is not
the way the average purchaser views the marks. To the average
buyer, the points of similarity are more important that minor
points of difference. A court should not engage in “technical
gymnastics” in an attempt to find some minor differences
between conflicting marks.
However, where there are both similarities and differences in
the marks, there must be weighed against one another to see
which predominate.
The rationale of the anti-dissection rule is based upon this
assumption:“An average purchaser does not retain all the details
of a mark, but rather the mental impression of the mark creates in
its totality. It has been held to be a violation of the anti-dissection
rule to focus upon the “prominent” feature of a mark and decide
likely confusion solely upon that feature, ignoring all other
elements of the mark. Similarly, it is improper to find that one
portion of a composite mark has no trademark significance,
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leading to a direct comparison between only that which remains.”

[Emphasis Supplied]
21. The view of the author makes it scintillatingly clear, beyond
pale of doubt, that the principle of ‘anti dissection’ does not impose
an absolute embargo upon the consideration of the constituent
elements of a composite mark. The said elements may be viewed as
a preliminary step on the way to an ultimate determination of
probable customer reaction to the conflicting composites as a whole.
Thus, the principle of ‘anti-dissection’ and identification of ‘dominant
mark’ are not antithetical to one another and if viewed in a holistic
perspective, the said principles rather compliment each other.
*****
23. It is also settled that while a trademark is supposed to be
looked at in entirety, yet the consideration of a trademark as a whole
does not condone infringement where less than the entire trademark
is appropriated. It is therefore not improper to identify elements or
features of the marks that are more or less important for purpose of
analysis in cases of composite marks.
*****
26. Dominant features are significant because they attract
attention and consumers are more likely to remember and rely on
them for purposes of identification of the product. Usually, the
dominant portion of a mark is that which has the greater strength or
carries more weight. Descriptive or generic components, having little
or no source identifying significance, are generally less significant in
the analysis. However, words that are arbitrary and distinct possess
greater strength and are thus accorded greater protection.
[Autozone, Inc. v. Tandy Corporation15 ]”
(Emphasis supplied)
24. The Court has, therefore, to consider whether, as a whole, the
mark of the defendant infringes the registered trade marks of the
plaintiff. If they do not, then, the Court may examine whether, if any
part of the plaintiff's registered trade marks, which constitutes the
dominant part thereof, stands so infringed by the defendant's mark.
25. The word mark ‘SUBWAY’ and the device marks of the plaintiff
26. To my mind, it is clear that the defendant's mark
cannot be said, in any manner of speaking, to infringe any of the
plaintiff's word marks or device marks.
27. ‘SUBERB’ is not phonetically similar to ‘SUBWAY’, though both
are words of two syllables. The first syllable ‘SUB’ is common. ‘Sub’,
when used in the context of sandwiches, it is well known, is an
abbreviation for ‘Submarine’, which represents a well known variety of
long-bodied sandwiches, generally 6 or 9 inches in length. ‘Submarine
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Sandwich’ has, in fact, its own Wikipedia page, the opening passage of
which reads thus:
“A submarine sandwich, commonly known as a sub, hoagie
(Philadelphia metropolitan area and Western Pennsylvania English),
hero (New York City English), Italian (Maine English), grinder
(New England English), wedge (Westchester, NY), or a spuckie
(Boston English), is a type of American cold or hot sandwich made
from a cylindrical bread roll split lengthwise and filled with meats,
cheeses, vegetables, and condiments.23 It has many different
names.
The terms submarine and sub are widespread in the US and not
assignable to any certain part, though many of the localized terms
are clustered in the northeastern United States.”
28. A photograph of such a submarine sandwich, in which both the
plaintiff and the defendant deal, is also provided on the same page:

29. Submarine sandwiches, or ‘subs’, and their common

abbreviation are part of common knowledge and can, therefore, be
taken into account under Sections 56 and 57 of the Evidence Act, 1872,
as held by the Supreme Court in the following passage from Onkar Nath
v. Delhi Administration17 :
“The list of facts mentioned in Section 57 of which the Court can
take judicial notice is not exhaustive and indeed the purpose of the
section is to provide that the Court shall take judicial notice of
certain facts rather than exhaust the category of facts of which the
Court may in appropriate cases take judicial notice. Recognition of
facts without formal proof is a matter of expediency and no one has
ever questioned the need and wisdom of accepting the existence of
matters which are unquestionably within public knowledge. (See
Taylor, 11th Edn., pp. 3-12; Wigmore, Section 2571, footnote;
Stephen's Digest, notes to Article 58; Whitley Stokes’ Anglo-Indian
Codes, Vol. II, p. 887.) Shutting the judicial eye to the existence of
such facts and matters is in a sense an insult to commonsense and
would tend to reduce the judicial process to a meaningless and
wasteful ritual.”
(Emphasis supplied)
30. In fact, Mr. Submarine Ltd., the petitioner in the three Mr.
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Submarine judgements on which Mr. Sethi places reliance, also deals

with outlets serving submarine sandwiches. The very title of the
franchise, “Mr. Submarine”, testifies to the commonality of the usage of
‘Submarine’ as a moniker for sandwiches of a particular type. ‘Sub’ is,
therefore, publici juris, when used in the context of such eateries.
31. No exclusivity can, therefore, be claimed, by the petitioner over
the first part of its registered SUBWAY mark, i.e, ‘SUB’. The plaintiff
cannot claim a monopoly over all two-syllable words of which the first
syllable is ‘SUB’, especially when used in the context of eateries which
serve sandwiches and similar items.
32. Once, thus, the ‘SUB’ part of the SUBWAY mark is out of the
way, there is, quite obviously, no similarity, at all, between ‘WAY’ and
‘ERB’. This issue stands covered by the judgement of the Supreme
Court in J.R. Kapoor v. Micronix India18 , on which Mr. Sood rightly
relies.
33. J.R. Kapoor18 dealt with the competing marks ‘MICRONIX’ and
‘MICROTEL’, of which the first syllable ‘Micro’ was found to be
descriptive of the products in which the parties dealt. The Supreme
Court held, therefore, that no exclusivity could be claimed over the
prefix ‘Micro’ and that, as the suffixes ‘Nix’ and ‘Tel’ were dissimilar
phonetically and otherwise, no infringement could be alleged. Para 6 of
the report reads thus:
“6. There are two things which impress us. Firstly, the appellant is
not manufacturing any one product such as the boosters, which has
been mainly taken into consideration by the High Court. He is
producing various electrical and electronic apparatus in many of
which micro-chip technology is used. Even the boosters which he
manufactures and sells are of two types, viz., transistorised boosters
and integrated circuit boosters whereas the respondent-plaintiff
manufactures aerial boosters only of the first type. Thus micro-chip
technology being the base of many of the products, the word ‘micro’
has much relevance in describing the products. Further, the word
‘micro’ being descriptive of the micro technology used for production
of many electronic goods which daily come to the market, no one can
claim monopoly over the use of the said word. Anyone producing any
product with the use of micro-chip technology would be justified in
using the said word as a prefix to his trade name. What is further,
those who are familiar with the use of electronic goods know fully
well and are not likely to be misguided or confused merely by, the
prefix ‘micro’ in the trade name. Once, therefore, it is held that the
word ‘micro’ is a common or general name descriptive of the
products which are sold or of the technology by which the products
are manufactured, and the users of such products are, therefore, not
likely to be misguided or confused by the said word, the only
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question which has to be prima facie decided at this stage is whether

the words ‘tel’ and ‘nix’ in the trade names of the appellant and the
respondent are deceptive for the buyers and users and are likely to
misguide or confuse them in purchasing one for the other. According
to us, phonetically the words being totally dissimilar are not going to
create any such confusion in the mind of the users. Secondly, even
the visual impression of the said two trade names is different. In the
first instance, the respondent's trade name ‘MICRONIX’ is in black
and white in slimmer letters and they are ensconced in designs of
elongated triangles both above and below the said name. On the
other hand, the appellant's trade name ‘MICROTEL’ is in thick bold
letters in red colour without any design around. As regards the logo,
the respondent's logo consists of the word ‘M’ in a slim letter with ‘I’
sporting a dot on it and drawn in the well of ‘M’. Below the letter ‘M’
in small letters is written the word ‘MICRONIX’ and all these letters
and words are written in white in a black square in north-south
direction. As against this, the appellant's logo is one letter, viz., ‘M’
which is drawn in bold broad letter with its left leg slimmer than all
other parts which are in thick broad brush. The letter has also white
lines drawn across it which is in blue colour. There is no other letter
nor is it set against any background. We are, therefore, unable to see
how the visual effect of both the logos will be the same on the mind
of the buyers. This being the case, we are of the view that there is
not even the remotest chance of the buyers and users being
misguided or confused by the two trade names and logos. Same is
the case with the carton which merely reproduces both the trade
names and the logos.”
(Emphasis supplied)
34. It is obvious that the afore extracted passage from J.R. Kapoor
entirely covers the case at hand, insofar as the words ‘SUBWAY’ and
‘SUBERB’ are concerned.
35. One may also, in this context, rely on the decision in F. Hoffman
La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd.19 , in which,
while dealing with the marks ‘PROTOVIT’ and ‘DROPOVIT’, one of the
grounds on which the Supreme Court held that there was no
infringement was that the suffix ‘Vit’ was a common abbreviation for
Vitamin preparations, and that, discounting ‘Vit’, the remainder first
part of the competing marks were dissimilar. Para 8 of the report reads
thus:
“8. In order to decide whether the word “Dropovit” is deceptively
similar to the word “Protovit” each of the two words must, therefore,
be taken as a whole word. Each of the two words consists of eight
letters, the last three letters are common, and in the uncommon part
the first two are consonants, the next is the same vowel ‘O’, the next
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is a consonant and the fifth is again a common vowel ‘O’. The

combined effect is to produce an alliteration. The affidavits of the
appellant indicate that last three letters “Vit” is a well known
common abbreviation used in the pharmaceutical trade to denote
vitamin preparations. In his affidavit, dated January 11, 1961 Frank
Murdoch, has referred to the existence on the register of about 57
trade marks which have the common suffix “Vit” indicating that the
goods are vitamin preparations. It is apparent that the terminal
syllable “Vit” in the two marks is both descriptive and common to
the trade. If greater regard is paid to the uncommon element in
these two words, it is difficult to hold that one will be mistaken for or
confused with the other. The letters ‘D’ and ‘P’ in “Dropovit” and the
corresponding letters ‘P’ and ‘T’ in “Protovit” cannot possibly be
slurred over in pronunciation and the words are so dissimilar that
there is no reasonable probability of confusion between the words
either from the visual or phonetic point of view.”
36. Division Benches of this Court have also held to the same effect.
In Astrazeneca UK Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd.20 ,
the competing marks were ‘MERONEM’ and ‘MEROMER’, used for
pharmaceutical preparations containing Meropenem. The Court found
that the suffix ‘Mero’, when used in such preparations, was an acronym
for ‘Meropenem’ and was, therefore, descriptive and publici juris. ‘Nem’
and ‘mer’ were, it was held not to be phonetically or otherwise similar.
The plea of infringement was, therefore, rejected. Para 19 of the report
in the said case read thus:
“19. Admittedly, ‘Mero’, which is common to both the competing
marks, is taken by both the appellants/plaintiffs and the
respondent/defendant from the drug ‘Meropenem’, taking the prefix
‘Mero’ which is used as a prefix in both the competing marks. Both
the appellants/plaintiffs and the respondent/defendant are
marketing the same molecule ‘Meropenem’. Neither the
appellants/plaintiffs nor the respondent/defendant can raise any
claim for exclusive user of the aforesaid word ‘Meropenem’. Along
with the aforesaid generic/common prefix, ‘Mero’, the
appellants/plaintiffs have used the syllables ‘nem’, whereas, the
respondent/defendant has used the syllable ‘mer’. It is true that the
aforesaid words/trade names cannot be deciphered or considered
separately, but must be taken as a whole. But even if they are taken
as a whole, the prefix ‘Mero’ used with suffix in the two competing
names, distinguishes and differentiates the two products. When they
are taken as a whole, the aforesaid two trademarks cannot be said to
be either phonetically or visually or in any manner deceptively
similar to each other.”
37. Following Astrazeneca, another Division Bench of this Court
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held, in Schering Corporation v. Alkem Laboratories Ltd.21 , ‘TEMOKEM’

not to be deceptively similar to ‘TEMOGET’, when used for
pharmaceutical preparations containing Temozolamide.
38. ‘SUBWAY’ and ‘SUBERB’, when used in the context of eateries
serving submarine sandwiches are not, therefore, deceptively similar,
as ‘SUB’ is publici juris and common to the trade, and ‘WAY’ and ‘ERB’
are neither phonetically nor otherwise similar. After the modifications
undertaken by the defendant, the appearance of the defendant's red

and white “ ” mark cannot be said to be deceptively similar to

any of the plaintiff's ‘SUBWAY’ device marks, none of which use the red
and white colour combination. Their lettering, font and appearance are
easily distinguishable from each other.
39. Besides, there is substance in the defendant's contention that
the ‘SUBWAY’ brand is so well known that there is hardly any chance
that a person who wishes to partake from a SUBWAY outlet would walk
into one of the defendant's two outlets and partake from there. As has
been held by the Supreme Court in several decisions, including F.
Hoffman La Roche19 , the class of customers who would use the goods
and services of the parties is also a relevant consideration. A person
who wants to have food from a SUBWAY outlet knows where to go; it
would be quite unrealistic to visualize him walking, instead, into one of
the defendant's ‘SUBERB’ outlets.
40. It cannot, therefore, be said that the defendant's ‘SUBERB’ mark
infringes either the plaintiff's ‘SUBWAY’ word mark or any of the
plaintiff's ‘SUBWAY’ device marks.
41. Re : Plaintiff's word marks “SUBWAY CLUB” and “VEGGIE
DELITE”
42. The plaintiff originally contended that its registered trademarks
“SUBWAY CLUB” and “VEGGIE DELITE” stood infringed by the
defendants’ marks “VEGGIE DELICIOUS” and “SUB ON A CLUB”. The
defendants have, subsequently, modified the said marks with respect
to the sandwiches, to “VEG LOADED REGULAR” and “TORTA CLUB”.
43. Quite obviously, the marks “VEG LOADED REGULAR” and “TORTA
CLUB”, cannot be said to be similar, let alone confusingly or deceptively
similar to the marks “VEGGIE DELIGHT” and “SUBWAY CLUB”. Between
the marks “VEGGIE DELIGHT” and “VEG LOADED REGULAR”, the only
common feature is the initial “VEG” syllable which, in the context of
vegetarian sandwiches is obviously publici juris and common to the
trade.
44. Between the marks “SUBWAY CLUB” and “TORTA CLUB”, the only
common feature is the second word “CLUB” which, again, is publici
juris, when used in the context of club sandwiches, another commonly
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known and commonly understood variety of sandwiches, which

normally contains three layers of bread, as opposed to the normal two
layers in other sandwiches. In any event, the club sandwiches form a
distinct categories of sandwiches and when used in the context of such
sandwiches, the word “CLUB” is publici juris.
45. The initial “VEG” syllable in “VEGGIE DELIGHT” and the “CLUB”
word in “SUBWAY CLUB”, if kept out of the reckoning, there is no
similarity between “VEGGIE DELITE” and “VEG LOADED REGULAR” or
between “SUBWAY CLUB” and “TORTA CLUB”.
46. The modifications carried out by the defendants in respect of
these two marks, therefore, sets at rest any allegation of infringement,
which could be levelled by the plaintiff in that regard.
47. Re. “S” logo
48. The plaintiff does not hold any Indian or WIPO registration in
respect of the “S” logo. No infringement can, therefore, be alleged in
that regard.

49. That apart, even otherwise, the “S” logos of the plaintiff ( )

and the defendants ( ) are completely dissimilar.

50. Structurally, there is no similarity whatsoever between the “S” of
the plaintiff and the “S” of the defendants. The plaintiff's “S” comprises
the normal letter “S” within a larger “S” formed by curved upper and
lower arrows pointing in opposite directions. None of these features are
present in the defendants’ “S”. The one point of similarlity which Mr.
Sethi had originally sought to urge between two “S”s, being similarity
in colour, also stands effaced with the modification, by the defendants,
of the colour combination of its “S” from green, white and yellow to red
and white. Even the background of the planitiff and defendants “S”s are
different, the plaintiff's “S” being in a green background and the
defendants’ “S” on a black circle in a white square.
51. There is no similarity, therefore, between the “S” marks of the
planitiff and the defendants. Besides, as already noted, the plaintiff
holds no registration for the ‘S’ mark.
52. Re : Passing off
53. No substantial arguments, on the aspect of passing off, were
advanced by Mr. Sethi. Passing off is, fundamentally, a matter which
requires trial, as an allegation of passing off cannot be decided by
merely comparing marks. Passing off is a non-statutory tort relatable to
the common law. Commission of the tort would require the defendant
to pass off of its goods or the services as those of the planitiff. In order
to establish, even prima facie, commission of the said tort, the plaintiff
would have to demonstrate that a person of average intelligence and
imperfect recollection is likely, owing to the manner in which the
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defendants use their marks and other such features, to confuse the
goods and services of the defendants with those of the planitiff.
54. Any such possibility stands conclusively foreclosed even by the
reputation that the plaintiff commands in the market. There is no
likelihood, whatsoever, of a person of average intelligence, who desires
to partake of food from a “SUBWAY” outlet, walking, instead, into an
outlet of the defendants. No material which could lead to the inference
of any such possibility has been placed on record by the plaintiff.
55. On facts, therefore, prima facie, no case of passing off is made
out.
56. Re : Other factors cited by Mr. Sethi
57. Mr. Sethi also relied on several other “similarities” between the
plaintiff and the defendants, none of which, in my opinion, can be cited
as a ground to justify the prayer for injunction. Among these factors
were the similarity in the layout of the restraunts, counters, staff
uniform and menu cards. No person can claim any monopoly, in law,
over these aspects. As the law operates in this country, even if the
décor, layout, or appearance of the restaurant of the defendant is
identical, let alone similar, to that of the plaintiff, that cannot justify an
order of injunction by a Court. In that regard, this Court cannot
subscribe to the views expressed by the High Court of Canada in the
list of Mr. Submarine decisions on which Mr. Sethi relies. The law in
this country does not allow grant of an injunction merely on the ground
that décor, layout or appearance of restaurants of two different entities
are similar. No claim of exclucivity in respect of the décor or layout of
premises or menu cards, or staff uniforms, is available in Indian law.
58. The defendants have, nonetheless, modified the décor, layout,
wall hanging, menu cards and uniforms of the staff and its outlets so as
not to retain any similarity with the plaintiff in this regard. While I
reiterate that even if these features were similar, no claim to injunction
could be sustained by the plaintiff on that ground, in view of the
modification that the defendants have carried out, this issue does not
survive for consideration. There is, as things stand now, no similarity
between the defendants and the plaintiff even on these aspects.
Conclusion
59. Subject, therefore, to the defendants carrying out the changes
stated in the additional affidavit dated 3rd January 2023, within one
week from today and undertaking not to use the allegedly infringing
marks hereafter, the prayer for interim injunction is dismissed.
———
1
Rights protected under the Madrid Protocol read with Section 36F(1) of the Trade Marks
Act:
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“36-F. Effects of international registration. -

(1) From the date of the international registration of a trade mark where India has been
designated or the date of the recording in the register of the International Bureau about the
extension of the protection resulting from an international registration of a trade mark to
India, the protection of the trade mark in India shall be the same as if the trade mark had
been registered in India.

2
(1889) 6 RPC 531

3 (1969) 2 SCC 727

4 (1972) 1 SCC 618

5
(2004) 3 SCC 90

6
1975 CarswellOnt 1001

7 1976 CarswellOnt 1006, 34 C.P.R. (2d) 177

8
1977 CarswellOnt 1041, 36 C.P.R. (2d) 270

9 (2005) 119 DLT 99; (2005) 30 PTC 377

10 1994 Supp (3) SCC 215

11
(2018) 73 PTC 115 (Del)

12 29. Infringement of registered trade marks. -

(1) A registered trade mark is infringed by a person who, not being a registered proprietor or
a person using by way of permitted use, uses in the course of trade, a mark which is identical
with, or deceptively similar to, the trade mark in relation to goods or services in respect of
which the trade mark is registered and in such manner as to render the use of the mark likely
to be taken as being used as a trade mark.

(2) A registered trade mark is infringed by a person who, not being a registered proprietor or
a person using by way of permitted use, uses in the course of trade, a mark which because
of—

(a) its identity with the registered trade mark and the similarity of the goods or services
covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or similarity of the goods or
services covered by such registered trade mark; or

(c) its identity with the registered trade mark and the identity of the goods or services
covered by such registered trade mark, is likely to cause confusion on the part of the public,
or which is likely to have an association with the registered trade mark.

(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is
likely to cause confusion on the part of the public.
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(4) A registered trade mark is infringed by a person who, not being a registered proprietor or
a person using by way of permitted use, uses in the course of trade, a mark which -

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade
mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due
cause takes unfair advantage of or is detrimental to, the distinctive character or repute of
the registered trade mark.

(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as
his trade name or part of his trade name, or name of his business concern or part of the
name, of his business concern dealing in goods or services in respect of which the trade mark
is registered.

13 (2015) 61 PTC 231

14 994 F.2d 1359 (9th Cir. 1993)

15
174 F. Supp. 2d 718 (M.D. Tenn. 2001)

16 (2014) 211 DLT 296

17 (1977) 2 SCC 611

18
1994 Supp (3) SCC 215

19 (1969) 2 SCC 716

20 (2007) 34 PTC 469 (DB)

21
(2009) 165 DLT 474 : (2010) 42 PTC 772

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