“Barbie” is one of the most fiercely protected IP in the world. The success conquered by this multi-million brand is the result of numerous court disputes where the ownership of various trademarks and patents was questioned.[i] Protection of trademarks is one of the essentials for ensuring the success of a brand as it is a symbol of the brand’s goodwill and the reputation it has in the eyes of its customers. In simple words, Trademark can be a name, logo or a tagline that a company or an organisation chooses to represent itself and its products with. This name, logo or tagline creates a distinct image of that product in the mind of customers and thus separates it from the rest of the product in the market. It is also a sign of quality assurance as by looking at a reliable trademark, consumers know that they are getting the best their money could buy. If used properly, trademark can be a substantial marketing tool as it aids in brand recognition; it creates a visual connection between the product and its customers.
To protect this very visual connection, the owners of well-known trademarks often go to great lengths. In our present case of discussion, Subway IP LLC v. Infinity Food & Ors, (2023)[ii], witnessed in the High Court of Delhi, the owner of the well-known trademark -SUBWAY- tried to monopolise over the phrases that are of publici juris. The court dismissed the application and this decision came as a big relief to the small and new business owners. To understand how, let us first talk about the various concepts discussed in it.
Why is it necessary to protect your trademark?
Having a right over a trademark means to use the logo, name or tagline in question- ourselves, or license it to some other entity or assign it to some other entity. This right is exclusive and other than the owner of trademark, no one else has the right to use, license or assign the trademark. It is this right that gives value to your trademark, as using it yourself grants you goodwill and monetizing your IP in exchange for others to use it can make you profits. Section 28 of the Trademarks Act, 1999[iii] protects this right from being infringed with regard to trademarks duly registered under the Act. Violation of this right in any way can result in monetary loss as well as depreciation of brand reputation. That is why this right is protected under the Act. Section 29[iv] protects from infringement of registered marks; using identical or deceptively similar marks as that of a registered mark is considered as infringement under this Section of the Act.
Unregistered marks are not given protection under the Act, although they can be protected under common law tort. As in the case of unregistered marks there is no statutory right regarding it, so there is no “infringement” of any right in case anyone uses them; its violation is termed as “passing off”. It means that another business is passing off your brand as theirs.
Doctrine of Dilution of Trademark
In our present case of discussion, another concept – Doctrine of Dilution of Trademark – has been discussed. This Doctrine is in relation to the consumers. Doctrine of Trademark Dilution means that the uniqueness of a well-known mark is being diluted as someone else is using the mark and creating confusion in the minds of consumers. This Doctrine thus protects famous trademarks from losing their individual identity that they have created in the market. The only test for this doctrine to apply is whether the similarity is as such that it can create confusion in the minds of the consumers.[v]
Judgment and Analysis
In the present case, the Subway stated that the mark used by Infinity Food, “SUBERB”, is deceptively similar to their own – “SUBWAY”. They requested the court to grant an injunction under Section 29 and 134[vi] of the Act. Under Section 134, suit can be instituted for infringement as well as passing off.
There were other similarities too which the defendant had offered to remove-
- The use of names such as “VEGGIE DELICIOUS” and “SUB ON A CLUB” were deceptively similar to “VEGGIE DELITE” and “SUBWAY CLUB”- the ones SUBWAY is already using. Infinity Foods offered to change it to ‘VEG LOADED REGULAR” and “TORTA CLUB”.
- Use of identical colour scheme, staff uniforms, production method and décor art. Infinity Foods offered to change the colour scheme from Yellow and Green, that is in use by the SUBWAY, and change it to some combination of purple, pink, white or red.
- Use of content available on Subway’s website as it is on Infinity Foods website. The content was offered to be taken to be taken down by the defendant.
In addition to that, Infinity Foods also used the brand and logo “SUBWAY” in its outlets. It was later changed to “SUBERB”.
Subway was aiming at gaining exclusivity over the word “SUB”. It was their aim to protect the visual connection they had with their customers due to their brand name. Due to this reason, even after the changes proposed by the defendant, they were not satisfied.
Delhi High Court denied the request for injunction. Following is the reasoning given by the court for this decision:
- Publici juris- The term “SUB”, for which Subway was trying to gain exclusivity, is publici juris. It means that this term is available for public to use. The term “SUB” is common term in eateries and restaurants for representing submarine sandwiches (a type of long sandwich). This term cannot be made to use only by one entity. Additionally, as subway has argued that even the terms ‘VEG LOADED REGULAR” and “TORTA CLUB” are deceptively similar to their own brand names “VEGGIE DELITE” and “SUBWAY CLUB”. The Court stated that the terms “VEG” and “CLUB” are also widely used in eateries involved in sandwich service. No exclusivity can be granted over them.
- Phonetic similarity- The Court asserted that there is no phonetic similarity between the two terms i.e., SUBWAY and SUBERB. There is no reason to believe that there will be any confusion in ascertaining the difference between the two.
- Anti-Dissection- Section 17[vii] of the Act states that for granting a trademark, whole of the term is considered, not a part of the word. As Subway’s argument is based on the similarity of the term “SUB” and not the whole word “SUBWAY”, exclusivity cannot be granted.
J.R. Kapoor v. Micronix India, 1994 Supp (3) SCC 215: In this case it was questioned whether the marks “MICRONIX” and “MICROTEL” were in the infringement circle of each other or not. It was held that no exclusivity can be granted over the term “MICRO” and the other parts of the mark i.e., “NIX” and “TEL” are not similar, so no case of infringement can be made.
Schering Corporation v. Alkem Laboratories Ltd, (2009) SCC OnLine Del 3886: This case also aided in the decision. In this case it was question whether the term “TEMOKEM” is deceptively similar to the term “TEMOGET”. It was held that Temozolomide is a commonly used term in pharmaceutical spheres as it is a chemical compound used in preparation of cancer treating medicines. The term “TEM” is the only similar element between the two marks and exclusivity can not be granted over it as it is a symbol of the presence of Temozolomide in the medicine and a common term in the trade.
- Registration- Section 29 of the Act grants protection from infringement only to those marks which are registered as per the directions given under the Act. Subway has registered only “SUBWAY” as a wordmark and a device mark. No other elements, over which exclusivity was requested for, were registered under the Act.
It was held that although there might be vague similarities, it is not as similar so as to create confusion in the minds of the consumers. After the modifications, any claim of infringement or passing off is not valid and the court dismissed the application for interim injunction.
The Court also stated that Infinity Food has to make the changes, as offered, within one week. If they fail to do so, or continue to use the marks which might be infringing Subway’s rights, injunction can be passed against them.
Recent cases regarding infringement of well-known trademarks
There have been some recent cases with apparently similar issue.
- Dominos IP Holder LLC v. Dominick Pizza, 2023 SCC OnLine Del 6135[viii]: In this case, the defendant (DOMINICK) was alleged to be infringing registered marks of the plaintiff (DOMINO’S). As the term “DOMIN” is not a common term in the eateries circle and “DOMINO’S” is a registered mark, exclusivity was granted over it by the Court. Other registered marks like “CHEESE BURST” and “PASTA ITALIANO” were also replicated by the defendant. The defendant also failed to attend the mediation proceedings. It was apparent that it was the intention of the defendant to create confusion in the minds of consumers and keep doing it up to the point anyone stopped them. It was held that the case of imitative measures with regard to food items must be taken seriously and a high degree of caution must be taken against any kind of deceptiveness.
The Court granted the decree of permanent injunction in favour of the plaintiff. The defendants were restrained from using the infringed trademarks in any manner whatsoever.
- FSN E-Commerce Ventures Ltd. v. Pintu Kumar Yadav, 2023 SCC OnLine Del 6765 (Nykaa vs. Oykaa)[ix]: In this case, it was observed that other than the phonetically similar marks, even the website content was and designs were similar. The defendant (OYKAA) has imitated even those parts which do not even apply to their product base, as the product line of the plaintiff (NYKAA) is vaster than that of the defendant. It is a case of extreme carelessness and it is apparent that the defendants wanted to piggyback on the success of plaintiff by misusing their registered trademarks. It was held that as this is a case of cosmetic and healthcare products, quality assurance is utmost important, any kind of deceptiveness can prove to be harmful, not just for the plaintiff, but for the customers too.
Injunction was granted against the defendants and they were restrained from using “OYKAA” or any other similar marks as that of the plaintiff. It also ordered third party websites like Flipkart and Amazon, where the defendant had their products listed, to take down these products.
In these cases, it can be seen that no publici juris terms were being used and defendants have not shown any initiative on their side to lessen the degree of imitation. In our present case of discussion Subway was trying to gain monopoly over public goods (publici juris). It showed that small business owners can make a case for themselves against MNCs.
Conclusion
As perfectly summed up in the quote given above, to protect the value of a trademark, it takes a lot of diligence and watchfulness. Just like any other property, IP too can bring its owner profits and market value. And just like any other property, IP too needs to be protected fiercely for it to work.
[i] Melina Dionysiou, In A Barbie World – Protecting Your IP – Trademark – Cyprus, Trademark (Nov. 1, 2023), https://www.mondaq.com/cyprus/trademark/1384594/in-a-barbie-world—protecting-your-ip?email_access=on.
[ii] “SUBWAY” and “SUBERB” not phonetically and deceptively similar; Delhi High Court dismisses Subway’s plea for injunction for its mark “SUBWAY” against Infinity Food’s mark “SUBERB”, SCC Blog (Jan. 17, 2023), https://www.scconline.com/blog/post/2023/01/17/subway-and-suberb-not-phonetically-and-decptively-similar-delhi-high-court-dismisses-subway-plea-for-injunction-for-its-mark-subway-against-infinity-food-mark-suberb-legal-research-updates-news/.
[iii] Deo Ld, (May 12, 2022), https://www.indiacode.nic.in/bitstream/123456789/1993/1/A1999-47.pdf.
[iv] Ibid.
[v] Anubhav Pandey, The Doctrine of Dilution of Trademarks – iPleaders, IPleaders (July 29, 2017), https://blog.ipleaders.in/doctrine-dilution-trademarks/.
[vi] Ibid.
[vii] Ibid.
[viii] [Domino’s v Dominick] Delhi High Court restrains Dominick Pizza from using Domino’s registered trade marks, SCC Blog (Oct. 4, 2023), https://www.scconline.com/blog/post/2023/10/04/delhi-hc-restrains-dominick-pizza-from-using-dominos-registered-trade-mark-legal-news/.
[ix] [Nykaa v. Oykaa] Delhi High Court restrains use of mark ‘Oykaa’ in respect of cosmetic, healthcare products, (Oct. 25, 2023), https://www.scconline.com/blog/post/2023/10/25/dhc-restrains-use-of-mark-oykaa-in-respect-of-cosmetic-healthcare-products-legal-news/.
Author: Rhythm Bharti
Juris Centre 