So Subway is a bully, but only pays legal costs?

Subway Niche boss: Why I fought US giant,” by Bryna Sim. The Straits Times, 23 Apr 2012. He feared for employees, reputation amid ‘bullying’ tactics

It is a classic David and Goliath tale.

In the version that has just played out here, the ‘David’ is Subway Niche, a home-grown chain of five outlets selling nonya kueh, cakes and pastries, taken to court by American sandwich giant Subway for the use of the word ‘Subway’ in its name.

It has been a bruising four-year battle in court which has drained $300,000 from the savings of Mr Lim Eng Wah, the owner of Subway Niche.

He feared his hard work building up the Subway Niche name would all be lost. He feared for his 20 employees.

He could have just rolled over and let Goliath win, but Mr Lim, who is in his 50s, said he doggedly held on.

Subway’s owner, Florida-based company Doctor’s Associates, was on Wednesday ordered to pay legal costs to Mr Lim, an architect by training.

The thing that kept him going was ‘principle’, he said.

‘It had nothing to do with pride. It was simply not right. A big giant was trying to squash a small fry. I could have changed the name, but why should I give in to a bully just like that?’ he said.

He and his wife, formerly a secretary, set up Subway Niche in 1987, with him as its sole proprietor, and his wife the hand behind its wares.

For 20 years, they had peace. Then, five years ago, there came a ‘cease and desist’ letter from Doctor’s Associates, alleging that Mr Lim had infringed its registered trademark.

Mr Lim recalled being very angry at this. He said: ‘My wife and I had worked hard for so many years and established our business. We didn’t understand why Subway was suddenly doing this to us.’

For the first time in his life, he consulted a lawyer. He denied infringing Subway’s trademark and rejected the American chain’s demands.

Subway then sued to stop him from using the Subway Niche name.

The Subway trademark was registered here in 1989, although its first outlet opened here only in 1996. It said it took legal action when it became aware that Subway Niche also sold sandwiches.

Subway conceded that the Singapore company started selling sandwiches only in 2001, but High Court judge Judith Prakash pointed out that Mr Lim had started selling sandwiches and nonya kueh before Subway registered its trademarks here.

She also ruled that although Subway Niche’s trademark was similar to Subway’s, there was no real evidence that the public was likely to be confused.

Subway’s logo shows the word ‘Subway’ with arrows pointing out on either side of it; Subway Niche’s shows its name and an image of stylised train tracks entering a tunnel.

Mr Lim, who was away on a business trip when the verdict came, returned on Thursday to the good news.

Looking back, he said, the period of the legal battle was financially and emotionally draining. The couple, who have two daughters, aged 27 and 24, had many sleepless nights.

‘We were scared, worried, and angry all at the same time,’ he said, and added that the family felt as though Subway were trying to ‘drain them’.

They were uncertain that victory would be theirs; their lawyer had pegged their chances at just 50 per cent.

At one point, Mr Lim said his wife, fearing for his health and the monetary cost, wanted him to give up the fight and just let the name go.

But he told her: ‘How can we just change a name which everyone here knows, and start again from scratch?’

She never stopped worrying, but she also never once accused him of being stubborn; his daughters also backed him.

Expansion plans for the business were put on the back burner.

But now, things are sweet, and he is making up for lost time: Subway Niche opens its sixth outlet in Raffles City next month.

He said: ‘I’m proud of what we’ve been selling, and I’ve no regrets. I just hope the giant won’t come back.’


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