The Hon’ble High Court of New Delhi[1] was of the opinion that the mark ‘SUBWAY’ and ‘SUBERB’ are not deceptively similar to each other as the word, ‘Sub’, common to both the marks is a publici juris and the remaining ‘ERB and WAY’ are neither phonetically similar nor similar as a word mark.
The Case:
- The plaintiff claims that the marks SUBWAY and SUBERB are deceptively similar to each other. He submits that even the colour scheme of the said marks, logo, restaurant décor and the uniform of the staff is similar.
- On 21st December 2022, the court 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. The defendant offered a plan to plaintiff regarding the changes to be made which was not accepted by the plaintiff.
- The defendants submit that the plaintiff cannot 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. Also section 17(2) of the Trademark Act, 1999 does not permit dissection of the mark and claiming of exclusivity in respect of part of the mark.
Cases Referred:
- Supreme Court in case of J.R. Kapoor v. Micronix India[2] 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.
- In Astrazeneca UK Ltd v. Orchid Chemicals & Pharmaceuticals Ltd[3], 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.
- The judgement of a Division Bench of this Court in South India Beverages Pvt Ltd v. General Mills Marketing Inc.[4] has, however, subjected the anti-dissection rule to a caveat. The relevant passages from the decision explains The Rule of Anti-Dissection and states 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.
Conclusion:
- The 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.
- The point is also 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.
- Further the marks like the word ‘SUB ‘is generic in nature. Therefore no exclusivity can, therefore, be claimed, by the petitioner over the first part of its registered SUBWAY mark, i.e, ‘SUB‘.
[1] SUBWAY IP LLC v. INFINITY FOOD & ORS., CS(COMM) 843/2022.
[2] (1994) SUPPL. 3 SCC 215
[3] 2007 (34) PTC 469 (DB)
[4] (2015) 61 PTC 231
DUCTUS EDGE 