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

I agree with all of the visual similarities identified by the Claimant and set out above. The dominant element of each of Sign 1 and the Morley’s Red and White Mark is the brand name, which although different do present similarly with a closely similar but not identical italic font, the almost identical large, stylised M being the most dominant part of that dominant feature in each case. I find both the font used and the large, stylised M to be distinctive.

The strapline of each, although not dominant, is by no means negligible. I find in each case that it is an important secondary element, which has a distinctive role independent of the dominant element.

The placement of the strapline in both Sign 1 and the Morley’s Red and White Mark, under the dominant element and within the space provided by the drop of the right leg of the letter “M”, together with the almost identical italic serif font, and the similarity in words and the ellipse, add to the visual similarity, although the use of “MMM” in the Morley’s Red and White Mark is a distinctive element of the strapline which is a point of difference with Sign 1.

Also adding to the visual similarity in my assessment is the use of white text on a red background. I accept that those colours are not distinctive in this fast-food arena, but I accept Mr Pearson’s submission for the Claimant that the similarity in font, size and layout of the elements of both signs produces a pattern of white on red which is visually very similar and adds to the distinctiveness of the whole. I do not consider that the average consumer would perceive any difference at all in the shades of red and white used in the Morley’s Red and White Mark as imperfectly held in his mind and Sign 1 as used by the Defendants. Unless compared directly side by side, I find them to be almost identical.

Despite the different brand names in the dominant element (the differences which are made somewhat less significant in my judgment by the almost identical dominant stylised letter “M”, very similar font and word length) and the missing “MMM” and varied strapline in Sign 1, I find Sign 1 and the Morley’s Red and White Mark to be visually quite similar.

Aurally, I find that Sign 1 and the Morley’s Red and White Mark are dissimilar. If both are read out loud, including the strapline, the only real similarity is in use of the word “taste”, but the aural differences in the rest outweigh that similarity and render it negligible, in my judgment.

Conceptually, the brand name “Metro’s” within Sign 1 is not similar to “Morley’s” in the Mark. However, I find Sign 1 and the Mark to be similar conceptually overall, because of the conceptually very similar straplines centred around good taste.

On a global appreciation, then, I find that Sign 1 is similar to the Morley’s Red and White Mark to a medium degree.