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The Two Perspectives on The Trademark Issue of Brand Names

Updated: Jul 6, 2023

Abstract

The article aims to understand the 2 varied perspectives on the trademark issue of brand names. In the first aspect a prohibition imposed on Parle Products is discussed whereas in the second aspect a suit filed by Subway Inc. is analyazed. Before delving deeper into the topic let’s understand the term trademark so as to get a better understanding of the topic. A trademark is a legally registered symbol, word, phrase, design, or combination thereof that distinguishes and identifies goods or services of a particular company or business from those of others. It is a form of intellectual property that provides exclusive rights to the owner to use the mark in connection with their goods or services, and to prevent others from using a similar mark in a way that may cause confusion among consumers.

Trademarks serve as source identifiers, helping consumers identify and distinguish the origin of goods or services in the marketplace. They can include logos, brand names, slogans, product names, or even distinctive packaging or trade dress.

 

The First Aspect

The Delhi High Court issued an order on February 10th, 2023, prohibiting Parle Products Pvt. Ltd. from selling its Fabio/Fab!o vanilla cream-filled chocolate biscuits due to their "resemblance and deceptive similarity" to Oreo biscuits. This decision came after a lawsuit filed by Intercontinental Great Brands, which owns the Oreo brand, claiming that the two marks are phonetically similar. The court found that a consumer of average intelligence and imperfect recollection who had previously purchased and enjoyed an Oreo cookie would associate the Fab!o cookie with the Oreo cookie.


As a result, the court ruled that Parle had infringed on Oreo's registered trademarks by passing off its Fab!o cookies and issued an interim injunction prohibiting Parle from using the mark until the case was resolved. However, the court did not agree with Oreo's argument that the design of the two cookies was also similar.


Parle argued that their Fab!o mark was visually, phonetically, and structurally different from Oreo's mark, except for the shared letter "O," and pointed out that the embossing on the surface of the biscuits was dissimilar. Despite this argument, the court ruled in favor of Oreo and issued an interim injunction preventing Parle from using the mark until the case was resolved. According to the complaint, Parle had used the Fab brand for its biscuits before 2020 but launched cream-filled chocolate sandwich biscuits under "Fab!o" after 2020, which were allegedly deceptively similar to the Oreo mark.


The second aspect of a similar issue

On Friday (17th January 2023), the High Court in Delhi declined to prevent the sale of sandwiches labeled 'Suberb' by a local outlet and stated that the multinational restaurant franchise Subway cannot assert exclusive rights to all two-syllable words. In response to Subway IP LLC's lawsuit, Justice C Hari Shankar affirmed that 'Subway' and 'Suberb' were not "confusingly similar" when applied to restaurants serving submarine sandwiches and that their lettering, font, and appearance were distinguishable from one another in the current scenario. This ruling means that the sale of sandwiches under the 'Suberb' name can continue, at least for now.


The judge denied the plaintiff's request for a temporary injunction and noted that 'sub' was a shortened form of 'Submarine,' a widely recognized type of elongated sandwich. As a result, it was determined that the defendant's use of the 'Suberb' trademark did not violate the 'Subway' wordmark.


According to the court's ruling, 'Subway' and 'Suberb' are not misleadingly similar when applied to restaurants serving submarine sandwiches. The court explained that 'Sub' was a term of everyday use in the industry and, therefore, not subject to exclusive ownership, while 'way' and 'erb' were not phonetically or visually similar. The court stated that the petitioner could not assert an absolute right of the first syllable of their registered Subway trademark, 'Sub.' The court also noted that the defendant had changed their red and white brand, distinguishing it from the plaintiff's mark. The court also stated that the plaintiff did not possess any registration for the 'S' logo, so they could not claim infringement in that regard.


Specifically, in the context of eateries serving sandwiches and comparable food items, the plaintiff could not assert a monopoly over all two-syllable words that begin with 'Sub.' Additionally, the court recognized the defendant's argument that the Subway brand was well-established. It was unlikely that someone intending to eat at a Subway restaurant would accidentally go to a Suberb outlet.


Moreover, the court rejected the plaintiff's assertion of infringement of their registered trademarks, namely 'Subway Club' and 'Veggie Delite.' The court highlighted that the defendant had rebranded their sandwiches as 'Veg Loaded Regular' and 'Torta Club,' which were evidently distinct from the plaintiff's marks. Additionally, the court observed that the defendant had taken significant measures to remove any semblance with the plaintiff, such as modifying the interior design, layout, wall decorations, menu cards, and employee uniforms in their outlets.


These two cases help us to get an overview of how the courts decide in cases of companies having issues with trademark infringement.

Image Source: http://surl.li/hwybn


References



*This article is authored by Riya Jha & Aditya Sharan, Students from Symbiosis Law School, Noida and reviewed by Suryatej Singh Tanwar, Student from Symbiosis Law School, Noida.

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