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

The Defendants’ pleaded case is that the Defendants’ use of Sign 1 falls within the definition of “Metro’s Signs” under the 2018 Agreement “and therefore is no more likely to cause confusion than other conduct which the Claimant has agreed does not infringe on its rights”. I have found there is a likelihood of confusion between Sign 1 and the Morley’s Red and White Mark, and as I have already stated, I was required to determine that before turning my mind to the 2018 Agreement, which goes to the question of consent rather than confusion.

Alternatively, it is pleaded that KK relies on the 2018 Agreement as providing the Claimant’s consent to KK’s acts in relation to Sign 1. This is not a pleading which relates to the Franchisee Defendants at all, but only to KK, as reflected in the drafting of Issues 18 - 21. I will return to those issues later.

It is not pleaded, as the Defendants sought to argue it at trial, that the Franchisee Defendants’ use of Sign 1 was permitted by KK pursuant to the 2018 Agreement which did not expressly forbid him from sub-licensing or franchising it to others, and so it is not open to them to argue that now, in my judgment.

The Defendants do plead that there was an implied term of the 2018 Agreement, if not express, that the Claimant would not bring or threaten proceedings against any person, alternatively any person that is a Related Party to KK, for use of the Metro’s Signs.