Claim No: IP-2022-000066 - [2024] EWHC 1369 (IPEC)

I accept, as do the Defendants, that there is a common element in the name “Morley’s” which appears in two out of three of C’s Marks. However I accept the Defendants’ submission that the common element “Morley’s” is not used in the Signs complained of so cannot support the existence of a likelihood of confusion per W3 Ltd v easyGroup Ltd at [234].

I also accept, as do the Defendants, that there is a common element of the letter “M” in all of C’s Marks. However I accept the Defendants’ submission that it does not get off the ground for connecting C’s Marks as a family as it is not sufficiently distinctive as an element itself, being merely a single letter, and nor can C’s Marks be said to be “characterised by the repetition of the same prefix or suffix taken from an original mark” by reason only of that common letter “M” (per Miguel Torres v OHIM at [80] cited in W3 Ltd v easyGroupLtd above).

In relation to the common element of the stylised letter “M” in the Morley’s Mark and the Morley’s Red and White Mark, I accept the Claimant’s submission that this is a distinctive form of the letter “M” present in both marks, but it cannot be said that these two marks “reproduce in full the same distinctive element with the addition of a graphic or word element differentiating them from one another” per W3 Ltd v EasyGroup. That is because they do not reproduce in full the same distinctive element at all. That would be the word “Morley’s” as a whole, with the addition of the “MMM… It Tastes Good” strapline as the graphic element in the Morley’s Red and White Mark differentiating them from one another. If the stylised letter “M” is taken as the full distinctive element, then what has been added includes “orley’s”, and this is not an addition which differentiates one mark from the other, because it is found in both. As I have already noted, the “Morley’s” is not used in the Signs complained of so cannot support the existence of a likelihood of confusion.

I do not accept the Defendants’ submission that the Triple M Mark is conceptually unrelated to the Morley’s Red and White Mark but nor do I assess it as conceptually identical as the Claimant submits. In my judgment the “MMM…” in the Morley’s Red and White Mark, found as it is in the context of a sentence forming the strapline, is likely to be seen, pronounced and conceptually understood by the average consumer as one long “mmm” sound, i.e. as the familiar expression of pleasure in something tasty. “Triple M” is a somewhat oblique reference to the “MMM…” in the strapline of the Morley’s Red and White Mark, which I am satisfied many consumers would miss. They might think the “M” relates to Morley’s and this is a triple burger, for example, or simply not think about the reason it was chosen. I am also satisfied that few if any consumers would look at the words “Triple M” and read, pronounce or understand it as “mmm”. Similarly I am satisfied that few if any consumers would look at the strapline “MMM… It Tastes Better” and read or pronounce that as “Triple M… It Tastes Better”. That seems to me to be extremely unlikely (but note that I have a different view when “MMM” is used in a different context, see the discussion in relation to Issue 7 below). 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.

For those reasons, I find that C’s Marks do not comprise a family of marks.