SUBWAY is a popular fast-food chain with distinctive brand signage. Recently, one of its franchisees began operating restaurants under the mark/name SUBERB, copying every aspect of the SUBWAY brand – from its product names, menu cards, artworks, literary content, website, restaurant layout to its green/yellow colour scheme. SUBWAY sued its erstwhile franchisee for trademark and copyright infringement as well as passing off, however, the single judge of the Delhi High Court dismissed SUBWAY’s application for an ad-interim injunction on the grounds that the phrase ‘SUB’ was publici juris. Further, in the court’s opinion, the brand SUBWAY was so well-known that there was little chance that a person who wished to eat at a SUBWAY outlet would walk into outlets operating under the name SUBERB. Also, the single judge was satisfied by certain changes proposed by the ex-franchisee – particularly, those to its colour scheme.
Aggrieved, especially by the fact that the single judge had not taken into account the apparent dishonesty of the respondent, SUBWAY, represented by Remfry & Sagar, preferred an appeal against the said order. Upon hearing both parties, the Division Bench of the Delhi High Court set aside the order of the single judge on the ground that the latter had not given due weightage to the aspect of bad faith, namely the fact that the respondents, during their tenure as franchisees of the appellant and in the midst of operating a restaurant under the appellant’s mark/name ‘SUBWAY’, had started to run competing restaurants under the mark ‘SUBERB’ that copied every aspect of the SUBWAY chain of restaurants.
In its order, the Division Bench also recorded the respondents’ undertaking to change the name of their restaurant to ‘HUBERB’ (including on Instagram); use a new ‘H’ logo instead of a ‘S’ logo; use a red and white colour combination for the logo ‘H’ as well as on their restaurant signages or any other place where their name and logo were displayed; delete the website ‘SUBERB/ www.suberb.in’ and cancel its domain name registration for the said site; and inform restaurant aggregators Zomato and Swiggy about its change of name to ‘HUBERB’.