Trade mark infringement: key takeaways from a fast food icon’s recent High Court victory

It is therefore crucial that businesses seek advice in respect of the registration and subsequent enforcement of intellectual property rights, including registered trade marks.

Ward Hadaway’s Peter Hornsey and Sam Walker, alongside specialist intellectual property barrister Chris Pearson of Lamb Chambers, recently acted for fast food icon Morley’s in its successful trade mark infringement claim against a competing fast food franchisor, and 7 of his franchisees, who were each found by the Court to be unlawfully infringing Morley’s iconic brand.

Trade Mark Infringement

Various aspects of a brand can be protected by a registered trade mark. Some common examples include logos, names and slogans. Registration prevents a competitor from using a sign which is identical with the registered mark, or a sign which too closely resembles the registered mark with the result being that there is a likelihood of confusion for the public when deciding whether to buy the goods or use the services offered.

Typical remedies granted by the courts include injunctions to prevent the infringer from using the sign and/or damages for any losses suffered.

The Claim

Morley’s has been serving fast food (including its speciality fried chicken and burgers) for over 35 years and has more than 100 stores in London and beyond. It has collaborated with international brands such as Heinz, Nike, eBay and Spotify and has been referenced in various songs and music videos produced by Stormzy.

Morley’s is the registered proprietor of a number of trade marks, including its famous logo and the name of its signature dish – the “Triple M” burger.

However, despite Morley’s possessing the exclusive rights to use these marks, a fast food chain known as “Metro’s” (which had stores operated by 8 individuals – a franchisor (known as “KK”) and 7 franchisees) was offering a “Triple M” burger and a “MMM” burger for sale.

Metro’s was also using a logo which too closely resembled the Morley’s trademarked red and white logo. Morley’s argued that the Metro’s logo was similar to the Morley’s logo and that there existed a likelihood of confusion on the part of the public.

Copies of the logos, as replicated in the Court’s Judgment, can be found below:

The Court’s Judgment

In respect of the use of the “Triple M” sign by several of the Defendants, Her Honour Judge Clarke held that those Defendants had infringed Morley’s registered “Triple M” trade mark. The sign and the registered mark were identical and they were used in respect of identical goods (namely, burgers). This satisfied the test for infringement.

Her Honour Judge Clarke also held that several of the Defendants had infringed Morley’s “Triple M” mark via the sale of an “MMM” burger. The Court held that the “MMM” sign was similar to the “Triple M” mark. As a result of the sign and the mark being similar, rather than identical, the Court had to determine whether there was a likelihood of confusion on the part of the public. The Court held that there was indeed a likelihood of confusion and, as a result, the relevant Defendants had also infringed the “Triple M” mark through their use of “MMM”.

• They both contained white lettering on an identical or highly similar red background;
• The Metro’s sign used the same distinctive style and concept of the letter “M” for the first letter;
• The layouts of both were extremely similar given the presence of a similar name with a similar structure and font, and the presence of a strapline at the drop of the letter “M”; and
• They both made use of a similar strapline with very similar concepts, formats, words and punctuation.

After considering the above, along with the Defendants’ counter-arguments, the Judge held that the Metro’s sign was similar to the Morley’s mark. The Judge therefore considered whether, because the logos were similar, there existed a likelihood of confusion on the part of the public (or more specifically, in the eyes of the average consumer of the relevant goods/services).

Taking into account a number of factors, including: the enhanced distinctiveness of the Morley’s logo; the similarities between the logos; various comments and videos on social media; and the fact that the Defendants had also made use of the Metro’s sign in shops with a very similar “get-up” and decor to that of Morley’s stores, the Judge held that there was a “likelihood of confusion by a substantial part of that class of average consumer.” The Defendants had therefore infringed the Morley’s trade mark by their use of the Metro’s logo.

The Court also found that KK, as the Metro’s franchisor, was not only liable for his own infringing actions, but that he was also jointly and severally liable with each franchisee for their infringing actions.

Her Honour Judge Clark held that Morley’s “is entitled to injunctive relief against those Defendants who are still using the Signs”.

Key Takeaways

As illustrated by the above, it is vital that businesses:

• Protect their brand via the registration of intellectual property rights;
• Carefully monitor the use of any similar or infringing branding by competitors; and
• Enforce their intellectual property rights to prevent, and shut down, any infringing branding by competitors or imitators.

Ward Hadaway’s Intellectual Property team and Commercial Dispute Resolution team are hugely experienced in dealing with all aspects of the registration and enforcement of intellectual property rights. We seek to ensure that your brand is protected and that any disputes are resolved swiftly, pragmatically and commercially.

If you have any questions or require assistance from our experienced team of Commercial Litigator, please do not hesitate to contact us.