US giant loses to S'pore snack chain

The American owner of sandwich giant Subway has lost its trademark infringement suit against local snack chain Subway Niche.

In a 46-page written judgment yesterday, High Court judge Judith Prakash ruled in favour of Subway Niche’s sole proprietor Lim Eng Wah.

Justice Prakash ruled that although Subway Niche’s trademark is similar to that of Subway’s, there was no real evidence of a likelihood of confusion on the part of the public.

The judge noted that Lim, who set up his first stall in 1987, had taken pains to distinguish his goods from Subway’s.

Subway Niche sells prepackaged sandwiches made from sliced bread and ingredients like egg, tuna and ham.

Subway’s ‘submarine’ sandwiches, on the other hand, are prepared fresh from individual bread rolls and different ingredients ranging from simple egg and tuna, to teriyaki chicken.

Although Subway asserted that Subway Niche only started selling sandwiches in 2001, Justice Prakash accepted that Lim had started selling sandwiches and nonya kueh before Subway registered its trademarks in Singapore in 1989.

Subway’s owner, Florida-based company Doctor’s Associates, was ordered to pay legal costs to Lim.

The American company has been selling ‘submarine’ sandwiches under the Subway name since 1967.

At present, there are 34,891 Subway stores in 98 countries.

Subway Niche began in 1987 as an outlet in Wisma Atria selling local snacks. As at December 2009, there were eight Subway Niche outlets, one of which was a restaurant-style cafe.

In 2007, Lim received a ‘cease-and-desist’ letter from Doctor’s Associates, alleging that he had infringed its trademark. He denied any infringement and rejected Subway’s demands.

Subway then sued to stop Lim from using the Subway Niche name. The case was heard in the High Court in October last year.

In her judgment, Justice Prakash said that to succeed in its claim, Subway needs to demonstrate that consumers who purchased Subway Niche’s goods believe that they originate from, or are associated with Subway.

Justice Prakash found that there was very little evidence of confusion among consumers.

She said Subway identified some isolated instances of confusion by members of the public, but some of these were hearsay and must be disregarded. For instance, a Subway employee said he was once approached by two women who had ordered kueh lapis from Subway Niche.

The judge said that the evidence relied on by Subway was “deficient” and the testimony was “vague”.

Lim, who was represented by Senior Counsel Engelin Teh, could not be reached yesterday for comment after the judgment as he was out of the country.

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