There are times when trade marks of different franchises can be confusingly similar, which may eventually lead to legal proceedings. One of the most well known instances that bear testament to this is the Subway vs. Subway Niche case. Owned and operated by Doctor’s Associates Inc., “Subway” is a popular fast food chain specializing in Italian submarine sandwiches. The franchise has stores all over the globe and is considered to be a major player in the fast food retail industry.
On the other hand, “Subway Niche” is a chain of stalls located in Singapore that is owned and operated by local owner Lim Eng Wah. Known for offering a range of local delicacies such as sandwiches and nonya kueh, Lim Eng Wah has been using the “Subway Niche” mark since 1987.
When the global sandwich giant Subway came to know about Lim Eng Wah’s local snack enterprise “Subway Niche”, they sued “Subway Niche” for infringing their registered trade marks. In a landmark decision, the court took a three step approach in evaluating whether the marks were confusingly similar:
- Whether the alleged infringing mark is similar to the registered mark;
- Whether the goods and/or services presented are similar; and
- Whether there is a likelihood of confusion due to 1 and 2.
With regards to the first step, the court held that the two marks were conceptually, visually and aurally similar. The court also took into consideration the distinctiveness of the “Subway” mark by taking into account the nature in which the mark was used, the market share of the mark, the total amount invested for promoting the mark and certain other factors. Based on these, the court found that “Subway Niche” was similar to “Subway” even though the former had an extra word “Niche”.
The court also held that the sandwiches and cakes offered by “Subway” and “Subway Niche” both belong to Class 30 and Class 43. In other words, both companies dealt in similar goods.
However, when it came to analyzing whether there would be a likelihood of confusion among target customers regarding the two brands, the court held that it was unlikely that consumers would be confused. Subway failed to show that consumers would be confused between Subway’s and Subway Niche’s products. The necessary evidence required in such cases to prove a possibility of confusion, i.e. surveys, newspaper articles and interviews were lacking completely. On the other hand, Subway offered testimonies from employees who claimed that they were approached by certain members of the general public who mistook Subway’s stores for those of Subway Niche. These were deemed inconsequential by the court, which eventually ruled in favor of the defendant Lim Eng Wah and his enterprise Subway Niche.