Subway v Suberb

The famous sandwich chain Subway sought an interim injunction (order of the court that obliges one party to carry out a certain action or refrain from carrying out a certain action) against a food chain company Infinity Food & Ors. The reason behind this was due to Subway alleging that Infinity Food’s brand name “SUBERB” infringed Subway’s IP rights, which led to Subway filing a trademark infringement and passing off claim.

In filling legal action against Suberb, Subway claimed that the following actions infringed their IP rights:

  • The indistinguishable colour scheme of the two brands logos and names. Namely that Subway possessed yellow-coloured font in the first three letters of their brand name, followed by three green letters for the last three letters, in contrast with Suberb who adopted green font for the first three letters and yellow for the last three letters.
  • The adoption of ‘Veggie Delicious’ and ‘Sub on a Club’ was misleadingly alike to Subway’s registered mark of ‘Veggie Delite and ‘Subway Club’.
  • Both parties premises decorations, marketing material like menu card and may more were also very alike.
  • Service procedure to consumers like their service of the ingredients and techniques was also a duplicate of Subway’s service.

After the filed legal action, Suberb attempted to seek the courts permission to alter their colour scheme and other materials that Subway claimed to have been breaching their IP rights. Nevertheless, Subway expressed their unsatisfaction with this request as it was stated that Suberb was clearly breaching Subway’s rights before to making alterations to their brand and logo, these similarities was in place for the purposes of taking advantage of Subway’s goodwill and reputation. It was additionally added that even if alterations were made to the colour scheme, this would still create deception as the similarities would still exist. Also, Subway also expressed that as Infinity Food was a licensee of Subway, their actions were clearly dishonest and therefore this would warrant Subway to an injunctive relief.

However, Suberb disagreed on the grounds that altering and removing the colour scheme and the alleged similarities would eradicate the similarities that would amount to a plausible trademark infringement and passing off claim. Additionally, the word ‘SUB’ that Subway was declaring exclusivity over was generic, especially in relation to the sandwich chain that both parties were in.

Consequently, the court decided in favour of Infinity Food, there were many reasons for this decision. One of which was that both parties brand names were phonetically different, the word ‘SUB’ was generic and commonly used within the Sandwich trade. Therefore, this meant that Subway could not demand legal monopoly over two-syllable words, which also then meant that the rest of the brand name “WAY” and “ERB” did not carry any similarities. Additionally, Suberb later altering and changing any similarities that was alleged to be present meant that the existent similarities were removed.

In conclusion, the court dismissed the interim injunction claim.

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