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

This is a trade mark dispute relating to two South London chicken franchises. The Claimant says that this is the latest episode in persistent copycat behaviour by the 7^th Defendant since around 2010, during which time he has imitated and sought to ride on the coat-tails of the Claimant’s branding, in various shifting forms. Of relevance to this dispute are the terms of a settlement agreement of a previous trade mark infringement complaint made by the Claimant against the 7^th Defendant (“2018 Agreement”).

The Claimant is the owner of the following registered trade marks (together, “C’s Marks”):

The Claimant says that it has used C’s Marks since 1985 for the goods and services for which they are now registered in operating a substantial network of Morley‘s fast-food restaurant franchises throughout the UK controlled by the Claimant as franchisor.

The Claimant claims that C’s Marks are a family of marks. It says that C’s Marks have acquired a substantial reputation and have an enhanced distinctive character in relation to the goods and services for which each has been registered (“Relevant Goods and Services”) in the UK.

The Defendants accept that there is protectable goodwill in C’s Marks, but deny that the Claimant is the rightful owner of that goodwill, as it was only incorporated in 1992.

The Defendants further deny that C’s Marks comprise a family of marks, on the basis that only two of C’s Marks share a common element, with that common element simply being the name of the business.

The Defendants also operate and carry out business within the fast-food sector. The 7^th Defendant (“KK”) is the owner and franchisor of a network of “Metro’s” fast-food restaurant franchises (“Metro’s Brand”). The 1^st to 6^th Defendants and the 8^th Defendant are, or were, franchisees of the Metro’s Brand (the “Franchisee Defendants”). They carry or carried out business relating to the sale of food and beverages and the provision of restaurant and/or takeaway services under and by reference to the Metro‘s Brand pursuant to franchise agreements with the 7^th Defendant. Those include by use of a number of signs which the Claimant complains amount to infringement of C’s Marks.

KK and the Claimant have been in dispute in relation to KK’s use of signs, including “Mowley’s” and “Metro’s” before. The last dispute, in 2018, resulting in proceedings being brought by the Claimant to invalidate KK’s UK Trade Mark 3162189, but was resolved by the entry by them into a settlement agreement dated 16 December 2018 (the “2018 Agreement”) and signed by each of KK and the Claimant. This provided, inter alia, that KK would surrender two UK trade marks; would cease to use those UK trade marks or “Mowley’s” or “any other sign colourably similar” in the course of trade within 7 days; that he would make reasonable efforts to procure that any third party using those signs in the course of trade ceased such use; but that KK would be permitted to use in the course of trade ““Metro’s Fried Chicken” the logo a copy of which is included at Annex A [of the 2018 Agreement] and any reasonable modifications thereto” (“the Settlement Sign”), to include for the avoidance of doubt the application of the Settlement Sign to any packaging and any application for a registered trade mark in respect of the Settlement Sign.

The logo at Annex A was the following: