Intellectual Property Enterprise Court

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

Fecha: 07-Jun-2024

Determination

Determination

109.

I have the relevant principles in mind, and assess the likelihood of confusion through the eyes of each class of average consumer, taking account of all relevant circumstances, which include the context in which the sign is perceived by them.

110.

The Defendants have accepted that C’s Marks are inherently distinctive and have enhanced distinctiveness because of the use made of them. I must also take this into account, as “the issue of a trade mark’s distinctiveness is intimately tied to the scope of the protection to which it is entitled” (per Interflora Inc v Marks and Spencer plc [2015] EWCA Civ 1403, [2014] FSR 10. The fact that C’s Marks have a higher level of distinctiveness means that there is an increased risk of confusion in relation to each.

111.

I do not find this a difficult decision to reach. The combination of the following factors:

that a class of the average consumer is made up of late-night revellers a subset of whom are intoxicated and who pay a low degree of attention to their choice of fast-food shop;

ii)

that I have found that Sign 1 is similar to the Morley’s Red and White Mark to a medium degree;

iii)

that the Morley’s Red and White Mark has a higher level of distinctiveness giving rise to an increased risk of confusion;

iv)

that part of the context of the use of Sign 1 is that it is used in and on Metro’s shops with a very similar get-up to that of Morley’s stores, some of which (the large wall posters of a woman eating a burger, the brick walls, the red and white interior tiles) is visible from the street outside the stores through the shop windows;

that I accept SS’s evidence that the similarity between Sign 1 and the Morley’s Red and White Mark is more marked when Sign 1 is viewed on a lit-up fascia at night, such that it has confused even him into mistaking a Metro’s shop for one of his own;

means that I am satisfied that there is a likelihood of confusion by a substantial part of that class of average consumer. That is sufficient.

112.

I note for completeness that I do not consider the fact that the TikTok video-maker noticed the Metro’s branding including Sign 1 before entering the Metro’s shop is of the significance that the Defendants wish me to give it. He does not fall into either class of average consumer, being someone who is a specialist food critic for fast-food chicken shops albeit on TikTok, who visited the Metro’s shop to assess and review it on camera, and who I am satisfied was paying a high degree of attention to everything about the premises. Nor do I give much significance to my finding that it was not a coincidence that KK approved new Metro’s shops in locations near the Claimant’s shops. It seems to me that in South London it would be difficult to open a fast food chicken shop in a shopping area which was not within a kilometre or so of one of the Claimant’s shops, and similar types of food and drink outlets often cluster together in places with the footfall and customer numbers to sustain them. The fact that KK opened a Metro’s in Birmingham within a mile of the Claimant’s new shop does not without more inform me about the likelihood of confusion. The Claimant is entitled to no monopoly on fast-food shops in Birmingham.