Case note on Subway IP LLC. v Infinity Food and ors.

12th March, 2024 - 5:57 am Categories: Trademark 0 Comments

Introduction

Trademark law, a bastion of protecting intellectual property, is underpinned by intricate doctrines and principles. Among these, the anti-dissection rule and dominant feature test are crucial tools employed by courts to determine the distinctiveness and protectability of trademarks. Conventionally, it has been asserted that these two doctrines are not contradictory but rather complementary in their application. However, this paper embarks on a critical analysis challenging this conventional wisdom, which was again adopted by the court in case of Subway IP LLC v Infinity Food and Others[1]. The paper scrutinizes whether the application of the dominant feature rule is consistent and, more importantly, whether it contributes positively to the anti-dissection principle. The central argument posits that the results yielded by the application of these rules independently are contradictory, casting doubt on the assertion that they complement each other. By highlighting the factors pivotal in determining a mark’s dominance, which have not been taken into account by the courts in various cases and thus leading to misleading judgements and propounding as if the application of dominant feature rule is complementary to Anti-dissection.

Summary of Subway IP LLC v Infinity Food and Others.

The party Subway IP LLC, a U.S.-based company renowned for its worldwide chain of restaurants under the brand “SUBWAY,” is the owner of registered trademarks in India having mark . Infinity Foods LLP, the defendants used the word “SUBERB” for their outlets with a mark . The plaintiff filed for a legal action against the Defendants for infringement of their trademark, asserting that the defendant’s brand name and logo, “SUBERB,” is deceptively similar and closely resembled their registered mark, “Subway.” The court rejected the injunction request on the grounds of non-phonetic similarity between the marks and the use of a generic prefix. Consequently, the ruling favoured the defendants.

[Image Sources: Shutterstock]

The prominent rule to be applied in the trademark infringement cases is Anti-dissection rule, which is prescribed under s. 17 of the Trade Marks Act.[2] The composite nature of trademarks requires viewing them in its entirety during infringement analysis, as dictated by the Anti-Dissection principle. The relevance of this judgment rests on the fact that the court deviated from this test by considering the dominant part of the mark as a preliminary step, referencing some precedents. The anti-dissection rule is premised on an assumption that a typical buyer does not memorize every detail of a trademark. However, the court, in this case, subjected the anti-dissection rule to an exception. It is acceptable to assign varying levels of significance or “dominance” to specific portions or elements within composite marks. In instances involving composite marks, a particular element that holds greater prominence compared to other components may be identified as the “dominant mark.” While assessing the court takes into account the prefix SUB to be a dominant feature in the mark. It further says that the plaintiff cannot assert exclusive rights over all two-syllable words beginning with “SUB,” particularly when employed in the context of establishments serving sandwiches and related items. It is a well-known acronym for “submarine,” which stands for a well-known type of long-bodied sandwich, when used in the context of sandwiches. The court takes into account a franchise’s very name, “Mr. Submarine,” which attests to the widespread use of the term “submarine” to refer to a certain kind of sandwich. Therefore, when employed in the context of such establishments, “SUB” is publici juris. Thus, the petitioner cannot assert any exclusivity over the first character of its registered SUBWAY mark, “SUB.” Additionally, upon eliminating the “SUB” component of the SUBWAY mark, it becomes evident that there is absolutely no resemblance between “WAY” and “ERB.”

The court also looked into the consumer confusion element, however very tangentially. It says that an individual seeking food from a SUBWAY outlet is well aware of the destination; it would be highly improbable for them to mistakenly enter one of the defendant’s “SUBERB” establishments instead.

Anti-dissection v Dominant feature rule

The rule of anti-dissection requires the courts to evaluate the composite marks as an indivisible whole rather than cutting them into their component parts and compare them with the corresponding parts of the arrival mark in order to assess the likelihood of confusion when handling trademark infringement cases involving composite marks.[3] It has been decided that concentrating only on a mark’s “prominent” characteristic and determining likelihood of misunderstanding based only on it, disregarding all other aspects of the mark, is a breach of the anti-dissection rule. Likewise, it is incorrect to determine that a single element of a composite mark lacks trademark importance, thereby allowing a direct comparison between the other portions.[4] Courts have considered that, although a mark must be evaluated in its totality, it is acceptable to give a particular section or element of a mark more or less weight or “dominance” in circumstances where the mark is composite. The “anti-dissection” concept does not completely exclude considering the individual components of a composite symbol. The dominant components might be seen as a first step towards determining the final outcome of the likely consumer response to the competing composites taken as a whole. Therefore, the concepts of “anti-dissection” and “dominant mark” identification are not mutually exclusive; rather, when considered holistically, they enhance one another.[5]

This conclusion although seems justified in the theory, may, however produce different and sometimes opposite results. While a court may argue that the dominant mark rule is an extension of the Anti-dissection rule, the counterargument is based on the distinction in their application. The dominant mark rule, by singling out the most prominent element, suggests a departure from the holistic approach endorsed by the Anti-dissection rule. Therefore, the contention is that the two rules present opposing viewpoints on how to assess the likelihood of confusion in trademark cases.

The judgements subsequent to the decision of South India Beverages Pvt. Ltd. Vs. General Mills Marketing Inc. precludes to emphasis on the part where court explains what considerations must be taken into account while identifying a dominant feature of the mark. The court says that because dominant features draw attention and increase the likelihood that customers will remember and rely on them to identify the product, dominant characteristics are important. Generally, the strongest or most significant part of a mark is the dominant component. In general, descriptive, or generic components are less relevant in the analysis since they have little to no source identifying importance.[6] The case in hand completely neglects the process of identification and jumps directly to compare the common component of both the marks which was “SUB.” When the generic components are less relevant it is without saying that the argument of “SUB” denoting the common name for submarine sandwiches does not render us with a satisfactory solution.

In case of Vasundhra Jewellers (P) Ltd. v. Kirat Vinodbhai Jadvani,[7] that on a plain comparison of the VASUNDHRA Trademarks with the device mark “ VASUNDHRA FASHION”, it is apparent that the trademarks are not similar. Even if it is accepted that the word ‘Vasundhra’ is a dominant part of the VASUNDHRA Trademarks, the device label “/VASUNDHRA FASHION” cannot be accepted to be deceptively similar merely because it includes the word ‘Vasundhra.’ The dominant part of the said trademark is a leaf, is not common to the competing marks. Here again, the court while relying on the principle of dominant feature fails to go through the systematised analysis of identifying the dominant part. The conclusion reached might not be challenged, however it sets a bad precedential value and cause damage to the trademark law realm.

The court in Rooh Afza case, where the two marks were for beverage of similar kind that is Sharbat, puts a pre-requisite on the dominant feature rule. It says that the fact that both composite marks finish in “AFZA” adds a degree of resemblance to both marks when examining if the phrases “ROOH AFZA” and “DIL AFZA” are comparable. Trademark law would not protect it if the term “afza” was substituted with a phrase that was identical to “sharbat” or a modified version of it. Thus, this concept serves as a prerequisite and a check on the dominating feature rule.[8] The application of this pre-requisite can sometimes produce different conclusion from the analysis which takes into account just the Anti-dissection rule. The court fails to go on the visual similarity of the marks for analysing the differences and commonality, which might have led to a different conclusion if there were no role played by dominant feature rule.

In the case of Living Media India Ltd. v. Aabtak Channel Com (John Does),[9] as has already been noted, the plaintiffs have a family of marks all of which used the “TAK” suffix. Clearly, therefore, the “TAK” suffix has become a source identifier of the marks of the plaintiffs and is, therefore, the dominant part of the marks. Applying the principles enunciated in South India Beverages. In case of Anti-dissection rule the three criteria of sound, sight, and meaning may be used to compare rival marks for similarity. Furthermore, confusion may arise from similarities in any one of the three categories—visual impression, verbal sound, and meaning. Based on their overall commercial impression, two rival marks are compared to see if they are comparable or likely to cause misunderstanding[10]. If the courts were to apply Anti-dissection rule exclusively the similarity between “Aabtak” and “Aajtak” is very evident in sound sight and meaning. Nevertheless, if we examine whether “Tak” is a generic term or falls under publici juris, the application of the dominant feature rule may lead to a divergent conclusion. In this light, it becomes evident that the dominant feature rule cannot be convincingly labelled as a complement to the anti-dissection rule. The discrepancy in outcomes when both principles are applied independently challenges the court’s characterization of the dominant feature rule merely as an extension of the anti-dissection rule. This case also laid down source identifier criteria to examine whether a part is dominant or not. However, again, the same has not been done by the courts in any other case which gave precedence to dominant mark rule.

It is important for the courts to analyse the consumer’s perception of the mark in case of application of either of the rules. The standard to be employed should not that of a watchful consumer or trader, but rather that of an unsuspecting normal customer of the relevant goods when the question of whether the mark causes or is likely to create deception or confusion appears before a Court. After analysing the broad and prominent elements of the two marks, the Court must determine whether there is an overall likeness that might mislead a buyer and if a consumer of the goods is likely to be misled or confused. The totality of both marks must be taken into account.[11]

Conclusion

In conclusion, the examination of the anti-dissection rule and dominant feature test in trademark law unravels a complex interplay that challenges the notion of their inherent complementarity. As we dissected various cases and legal arguments, it becomes evident that courts, while applying the dominant feature rule, should prioritize consumer perception over mere visual similarity in competing marks. The critical aspect of source identification cannot be overlooked, ensuring that the fundamental purpose of trademark protection, i.e., avoiding consumer confusion, is preserved. Through the lens of the cases discussed above, it becomes apparent that the criteria for determining infringement, when applying the anti-dissection rule, may lead to different or even opposing results compared to the application of the dominant feature rule. The latter tends to neglect crucial criteria embedded in the former, challenging the notion that these doctrines seamlessly complement each other. Instead, the observed disparities underscore the potential antagonism between the anti-dissection rule and the dominant feature test. In moving forward, it is imperative for courts to recognize and navigate these complexities.

Author: Mahak Meena, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

[1] Subway IP LLC v. Infinity Food, [2023] 1 HCC (Del) 84.

[2] Trade Marks Act, 1999, s. 17.

[3] South India Beverages Pvt. Ltd. v. General Mills Marketing [2014] SCC OnLine Del 1953.

[4] Stiefel Laborataries v. Ajanta Pharma Ltd. 211 [2014] DLT 296.

[5] South India Beverages Pvt. Ltd. v. General Mills Marketing [2014] SCC OnLine Del 1953.

[6] ibid.

[7] Vasundhra Jewellers (P) Ltd. v. Kirat Vinod Bhai Jadvani [2022] SCC OnLine Del 3370.

[8] Hamdard National Foundation v. Sadar Laboratories (P) Ltd [2022] SCC OnLine Del 4523.

[9] Living Media India Ltd. v. Aabtak Channel. Com (John Does) [2023] SCC OnLine Del 5680.

[10] Hamdard National Foundation v. Sadar Laboratories (P) Ltd [2022] SCC OnLine Del 4523.

[11] Ansul Industries v. Shiva Tobacco Co [2007] SCC OnLine Del 74.