The Delhi High Court recently held that law in India did not allow the grant of injunction in a trademark infringement case merely on the ground of similarity in décor or layout of two different restaurants.

The Bench of Justice C. Hari Shankar observed that “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 exclusivity in respect of the décor or layout of premises or menu cards, or staff uniforms, is available in Indian law.”

In this case, application was preferred by Subway IP LLC seeking interim injunction against the Infinity Foods LLP. Subway was aggrieved by the use of brand name and logo “SUBERB”- with a yellow and green colour scheme, by use of brands VEGGIE DELICIOUS and SUB ON A CLUB which, were deceptively similar to the plaintiff‘s registered VEGGIE DELITE and SUBWAY CLUB marks, usage of identical, or substantially similar, signage, outlet décor, menu cards, and staff uniforms, use of photographs and wall art, in their outlets, which were similar to the photographs and wall art in the plaintiff‘s outlets and many other things.

The matter was adjourned on December 21, 2022, for enabling the defendants to examine as to whether modifications could be carried out which would satisfy the petitioner that the defendants were no longer infringing its intellectual property rights and with regard to this, an email was sent whereby the defendant offered that they would not use yellow or green colour either in the signage or the “S” logo and that they would pull down the websites of the defendants which copied the text found on the website of the plaintiff and that they would change the names “VEGGIE DELICIOUS” and “SUB ON A CLUB” to “VEG LOADED REGULAR” and “TORTA CLUB.”

Senior Advocate Sandeep Sethi appearing for the plaintiff submitted that the client was not satisfied with the changes made by the defendants and that the acts of infringement committed by the defendants before modifications were blatant, therefore, the intent of the defendants to copyright on the plaintiff‘s goodwill was transparent.

Advocate Pushkar Sood appearing for the defendants submitted that with the modifications made, the allegation of infringement and passing off, levelled by the plaintiff, could no longer sustain and that the plaintiff could not claim any exclusivity in respect of the initial ‘Sub‘ part of the ‘SUBWAY‘ mark, as ‘Sub‘ was generic with respect to the products in relation to which it was used.

The issue dealt with was- whether, after the modifications that the defendants had undertaken, the defendants could still be said to have infringed 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.

The Court observed that ‘Sub‘ was publici juris, when used in the context of such eateries which serve sandwiches and similar items. Therefore, no exclusivity or monopoly could be claimed by the petitioner over the first part of its registered SUBWAY mark, i.e, ‘SUB‘ and once, the ‘SUB‘ part of the SUBWAY mark was out of the way, there was no similarity, at all, between ‘WAY‘ and ‘ERB‘.

The Court, with regard to the mark 'VEGGIE DELIGHT' and 'SUBWAY CLUB', observed that the only common feature was the initial 'VEG' syllable and 'CLUB' word, which obviously were publici juris and common to the trade.

The Court, with regard to other similar aspects i.e. similarity in the layout of the restaurants, counters, staff uniform and menu cards, observed that “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.”

The Court noted that the defendants had 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 and observed that “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.”

Accordingly, the application for interim injunction was dismissed.

Cause Title- Subway IP LLC v. Infinity Food & Ors.

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