A chicken shop date in court: Morely’s v Nanthakumar and others

For fried chicken connoisseurs and Londoners out there, you will likely be familiar with the fried chicken shop Morley’s. What you might not know is that Morley’s have registered trade marks for the words ‘TRIPLE M’ and TRIPLE-M’ which are used in relation to its Triple M burger. For those of you that have had or seen the Triple M burger at Morely’s, it is quite the titan in the burger world!

So why would Morely’s have a trade mark for TRIPLE M? Well, in a recent case in the Intellectual Property Enterprise Court, Morley’s sought to defend its registered trade marks against the defendants’ use of similar signs in relation to food (namely, fried chicken) and fast-food restaurants.

This case was also the first intellectual property case to apply the knowledge requirement in relation to joint tortfeasance, following the recent Supreme Court decision in Lifestyle Equities v Ahmed.

Background

The claimant, Morley’s (Fast Foods) Limited, is the owner of ‘Morley’s’ trade marks in the UK, including the two marks depicted below (the “Morley’s Marks”). As mentioned above, Morely’s also owns trade marks for ‘TRIPLE M’ and TRIPLE-M’ (“Triple M Marks”).

Morley’s has used its trade marks in respect of food and fast-food restaurant services and has become well-known, particularly in London.

The defendants included the owner of another London fast food chain, ‘Metro’s’ (“7^th Defendant”), and its franchisees. The owner of Morely’s discovered that Metro’s and its franchisees were using similar signs (depicted below) for their restaurants, which was in breach of a 2018 settlement agreement between Morely’s and Metro’s. The defendants also used the signs ‘MMM’ and ‘TRIPLE M’ / ‘TRIPLE “M”’ in their shop windows and on menu boards.

The Claim

For the infringement of the Triple M Marks, Morley’s relied on sections 10 (1) and 10 (2) of the Trade Marks Act 1994 (“TMA”).

For the infringement of the Morely’s Marks, Morely’s relied on section 10 (2) TMA.

Morley’s also claimed that the 7^th Defendant is liable as a joint tortfeasor along with the franchisee defendants for the acts of infringement in relation to the use of the ‘Metro’s … It’s The Real Taste’ (“Metro’s Taste Sign”).

Decision

The court found that the defendants infringed the claimant’s trade marks.

In the assessment of the average consumer, the Judge held that the average consumer, particularly, “late-night revellers” who may be intoxicated and pay low attention to their choice of fast-food restaurant, could be confused by the similarity between the Metro’s Taste Sign and the Morley’s red and white trade mark. The Judge added that Metro’s shops had a similar get-up to Morley’s stores which increased the risk of confusion.

In relation to the joint tortfeasance point, the Judge found that the 7^th Defendant had reasonable grounds for knowing and should have appreciated that the use of the Metro’s Taste Sign infringed Morely’s red and white trade mark. Further, by granting the use of the Metro’s Taste Sign to the franchisee defendants, the 7^th Defendant knowingly authorised and procured the infringements.

Comment

Brand owners, particularly in the fast-food sector, should ensure that they protect their brand name and unique product names by way of a registered trade mark and enforce the same.

Interestingly, in the assessment of joint tortfeasance the Judge decided that 7^th Defendant’s history of following a strategy of imitating the claimant’s branding and the claimant’s history of taking action against him proved he had knowledge and reasonable grounds to know he was engaging in infringing activity. This highlights the importance of pointing to past infringements and any past dealings between parties in a litigation matter, when pleading joint liability.

Written by Saad Khan – Solicitor and Ahmad Abid – Work Experience