‘SUBERB’ is not phonetically similar to ‘SUBWAY’.
‘Sub’, when used in context of sandwiches, is an abbreviation for ‘Submarine’, which represents a well-known variety of long-bodied sandwiches. Mr. Submarine Ltd. v. Bikas, 1975 CarswellOnt 1001-Mr. Submarine Ltd. v. Emma Foods, 1976 CarswellOnt 1006-Mr. Submarine Ltd. v. Haralambos Voultsos, 1977 CarswellOnt 1041 testifies to commonality of usage of ‘Submarine’ as a moniker for sandwiches of a particular type. ‘Sub’ is, therefore, publici juris. No exclusivity can be claimed over ‘Sub’. Once ‘Sub’ is out of way, there is, quite obviously, no similarity at all between ‘WAY’ and ‘ERB’. This issue stands covered by J.R. Kapoor v. Micronix India, 1994 Suppl. (3) SCC 215. One may also rely on F. Hoffman-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., (1969) 2 SCC 716.
After modifications undertaken, Infinity Food’s mark cannot be said to be deceptively similar to any of Subway IP LLC’s device marks, none of which use red-and-white colour combination.
A person who wants to have food from ‘SUBWAY’ knows where to go. It would be quite unrealistic to visualize him walking into ‘SUBERB’.
– Hon’ble Justice C. Hari Shankar of Hon’ble High Court of Delhi, Subway IP LLC v. Infinity Food, [CS(COMM) 843/2022] decided on 12.01.2023.