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C. HARI SHANKAR
Subway LP LLP – Appellant
Versus
Infinity Food – Respondent
ORDER (Oral)
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 [IMG] and [IMG]. 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 Mark | Registration No. | Class | Date of application | Valid till |
| 1 SUBWAY | 513704 | 30 | 20th July 1989 | 7th April 2025 | |
| 2 | SUBWAY | 513705 | 32 | 20th July 1989 | 7th April 2023 |
| 3 | [IMG] | 1347782 | 42 | 30th March 2005 | 30th March 2025 |
| 4 | SUBWAY | 1349577 | 42 | 7th April 2005 | 7th April 2025 |
| 5 | SUBWAY | 1933097 | 29 | 9th March 2010 | 9th March 2030, |
| 6 | [IMG] | IRDI-3597627 | 29, 30, 32, 35, 43 | 13th January 2017 | 13th January 20271[*Rights protected under the Madrid Protocol read with Section 36F(1) of the Trade Marks A |
The main legal point established is that the application of the anti-dissection rule and the identification of dominant marks are crucial in determining infringement of registered trade marks.
The court found that despite phonetic similarity, the distinctiveness of trade marks and differences in intended consumer bases negate the likelihood of confusion and passing off.
Generic and descriptive terms in trademarks cannot be exclusively claimed, and likelihood of confusion must be assessed holistically from the average consumer's perspective.
The court held that the plaintiff has made out a prima facie case of infringement and granted an ad interim injunction restraining the defendant from using the mark NOVAEGIS or [IMG] in any form or m....
The court emphasized likelihood of consumer confusion in trademark law, holding that similar marks can infringe established trademarks regardless of differences in service or field, thus supporting t....
Distinctiveness in trademark law must be assessed concerning the goods or services; common terms can acquire distinctiveness based on usage, thus allowing for a prima facie case of infringement.
On a plain reading of Section 15(1), it is evident that where a proprietor of a trade mark claims to be entitled to exclusive use of any part thereof separately, he is permitted to apply to register ....
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