Her Honour Judge Melissa Clarke has ruled in favour of Morley’s, a south London fast food chain, in its trade mark infringement case against a rival called Metro’s, in a case in the UK's IP Enterprise Court (IPEC).
Morley’s owns trade mark registrations for its logo (pictured), for TRIPLE-M and for its red and white logo (also pictured), for goods and services including food preparation and restaurant/takeaway services. It has more than 100 outlets, some owned outright and some franchised.
In about 2010 Morley’s became aware of a rival called Mowley’s, which was set up by Kunalingam Kunatheeswaran. It obtained an injunction against him in November 2010.
Mr Kunatheeswaran subsequently (from about 2015 although the exact date was disputed) used the Metro’s name and branding (pictured, with a blue border) on fast-food outlets. He also registered Mowley’s as a trade mark in 2016 and applied to register a trade mark for Metro’s (this had been opposed).
Under a settlement agreement signed by the parties in 2018, Mr Kunatheeswaran and one other business could continue to use the Metro’s sign but without making it any closer to Morley’s marks while the Mowley’s mark was to be removed from the register.
Subsequently, Mr Kunatheeswaran and seven franchisees used the Metro’s sign with the slogan “…It’s The Real Taste” (pictured) and without the blue border. Some of the defendants were also alleged to have used MMM and/or TRIPLE M in their branding.
The Judge’s findings
The judge rejected Morley’s claim that its marks comprised a family of marks, finding that:
“MMM…” would not necessarily be associated by consumers with “Triple-M”. She said: “I do not consider those visually and aurally different, and conceptually only obliquely similar, elements are a ‘common element’ sufficient to found a family of marks.”
But she found for Morley’s on all its other claims. In particular, the Metro sign as used was not covered by the 2018 agreement; both Mr Kunatheeswaran and his franchisees had infringed the red-and-white mark; the Triple-M mark was also infringed; and Mr Kunatheeswaran had breached the 2018 agreement.
The judge discussed the recent Supreme Court judgment on director’s liability in Lifestyle Equities v Ahmed (which we reported in May 2024 here). She found that Mr Kunatheeswaran “had reasonable grounds for knowing, and should have appreciated” that his sign was infringing Morley’s red-and-white mark and that by granting licences in franchise agreements he had “knowingly authorised and procured the infringements” and therefore was jointly liable for them.
What does this mean?
The case shows the importance of defining the average consumer in trade mark litigation. HHJ Clarke found that there were two classes of average consumer in this case:
Children, young people, students and families, who buy at lunch, at teatime and into the evening and have low disposable income, and who have a medium to low degree of attention; and
The “late-night and early-morning revellers … who are likely tired, hungry and a significant subset of which will be intoxicated” who pay a low degree of attention.
Only one of these classes of average consumer needs to be confused for there to be a likelihood of confusion.
Given the low degree of attention paid by the second class of consumer, the similarity between the sign and the red-and-white mark, the higher level of distinctiveness of Morley’s mark, the similar get-up of the stores and the way they are seen at night, the judge was satisfied there was a likelihood of confusion by a substantial part of that group.
Notably, she did not attach much importance to evidence that a TikTok video-maker noticed the Metro’s branding before entering the store, saying that as a specialist food critic (and unlike the average consumer) he was paying a high degree of attention.
The other big problem for Metro’s was that the judge considered that there were “significant inconsistencies and contradictions” in Mr Kunatheeswaran’s evidence. She found him to be unreliable and “on some occasions, lacking in credibility or actually untruthful”.
The judgment is good news for small businesses concerned about copycat behaviour and also demonstrates the value of the IPEC as a forum for resolving these kinds of disputes relatively cheaply and quickly.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com