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

The Claimant submits that the similarities between Sign 1 and the Morley’s Red and White Mark are likely to lead to confusion in the mind of the average consumer viewing the signs at a glance from street level, particularly because of the use by the Defendants of the same tones of red and white in Sign 1 as the Claimant uses in the Morley’s Red and White Mark, which are the colours in which it is registered, and the way in which Sign 1 has been laid out, which means that from a distance, the average consumer, particularly that in the class of late night revellers who pay a low degree of attention and may be impaired by alcohol, may perceive Sign 1 as the Morley’s Red and White Mark. The Claimant relies on SS’s evidence that the similarity between Sign 1 and the Morley’s Red and White Mark is enhanced when Sign 1 is seen on a lit up shop fascia at night, as it shows bright red with the layout of the white script closely resembling Morley’s script and layout producing an effect very similar to the Morley’s Red and White Mark, such that he told the court in oral evidence that on occasion, driving home through the streets of South London late at night, he has mistaken a Metro’s for one of his own stores.

The Claimant also relies on instances of actual confusion set out in my review of the evidence – SS’s conversation with the barista who thought the Metro’s across the road was a Morley’s, the TikTok and YouTube videos, and other social media comments.

The Claimant also relies on the context in which the Defendants have used Sign 1 as increasing the likelihood of confusion, including:

The Defendants submit that:

Ms Watkinson attempted to argue that the majority of similarities relied upon by the Defendants as causing a likelihood of confusion for the average consumer between Sign 1 and the Morley’s Red and White Mark were present in the Settlement Sign, or are reasonable modifications of the Settlement Sign (including the general layout), but that is putting the cart before the horse, in my judgment. Having found Sign 1 and the Morley’s Red and White Mark are similar, I next must make a determination about whether there is a likelihood of confusion. It is only if I find a likelihood of confusion that I need go on to consider whether that use is without consent, as is the Claimant’s case, or if the 2018 Agreement provides the Claimant’s consent for the Defendants’ use of Sign 1, as is the Defendants’ case. That is the point at which I will consider the terms of the 2018 Agreement, and consider whether Sign 1 falls within the scope of the Settlement Sign and any reasonable modifications to it.