Intellectual Property Enterprise Court

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

Fecha: 07-Jun-2024

Issue 4 – Is Sign 1 similar to the Morley’s Red and White Mark?

Issue 4 – Is Sign 1 similar to the Morley’s Red and White Mark?

Submissions

93.

The Claimant submits that both are visually highly similar in that:

both use white lettering on a background in an identical or highly similar red;

ii)

Sign 1 uses identically the distinctive form of the letter “M” as the first letter of the main word;

iii)

the layouts of Sign 1 and Morley’s Red and White Mark are highly similar, being a main word with highly similar structure and highly similar larger font, set above a strapline beginning after the drop of the letter “M”;

iv)

the use of a similar strapline with shared elements (It, Taste, and an ellipse) and conveying a highly similar concept of good taste (“…It’s The Real Taste” in Sign 1 and “MMM… It Tastes Better” in the Morley’s Red and White Mark). It submits that on a global comparison, the signs are highly similar.

94.

The Defendants deny that there is the required level of similarity between Sign 1 and the Morley’s Red and White Mark. They submit that:

the dominant element of Sign 1 is “Metro’s” and the dominant element of the Morley’s Red and White Mark is “Morley’s”, which are completely different brand names for entirely different brands and would be recognised as such by the average consumer;

ii)

the colour red used in each of Sign 1 and the Morley’s Red and White Mark is very commonly used in branding for fast-food restaurants, as was the evidence of both SS and KK, and is not distinctive of Morley’s;

iii)

within the context of a crowded marketplace such as fast food outlets, the colour red in branding will have a low level of distinctiveness in the context of a sign and the average consumer will place greater focus on any word elements to distinguish between signs;

iv)

they dispute that the shade of red used in Sign 1 is identical to that used in Morley’s Red and WhiteMark.

95.

Ms Watkinson in closing sought to rely on SS’s “confirmation… that the oral pronunciation of Morley’s lies in its reputation” – I think she meant this the other way around, i.e. that the reputation of Morley’s lies in its pronunciation – but this was not SS’s evidence. He accepted that the pronunciation of Morley’s was “significant” in developing that reputation, but not more.