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

SS’s evidence is that he discovered that KK had registered the “Mowley’s” mark as a UK trade mark in 2016, despite the injunction still in force and notwithstanding that he had changed the name of his shop to Metro’s. He also discovered that KK had tried to register “Metro’s” as a UK trade mark, but this had been refused due to opposition by Associated Newspapers Limited. The Claimant wrote to KK to object to the “Mowley’s” mark and also to his use of “Metro’s”. He said after this correspondence, and since SS lived in Ladywell and walked past KK’s shop every day on his journey to work, KK would wait outside his Metro’s shop for him and try to speak to him on a daily basis. Eventually they did meet and had discussions. SS said that KK made clear that he would remove the “Mowley’s” trade mark from the register if the Claimant permitted him to use the “Metro’s” sign. SS said KK told him he was the only person using the Metro’s sign, but one other person was using the Mowley’s brand (a man called Ameen) who KK said would stop using the Mowley’s name and instead, like him, use the Metro’s brand. SS’s written evidence is that “Given the very limited extent of our agreement, and on the additional basis that he could not change the Metro’s sign so as to make it more like our Morley’s signs, I therefore agreed”. SS says that KK never told him that he intended to franchise the Metro’s brand, and if he had done so, he would never have entered into the Settlement Agreement. He said “When we signed the settlement agreement, it was always my belief and intention that the agreement would allow only [KK] and Ameen to use the Metro’s sign. No one else… [it] was to regulate what [KK] and Ameen were doing. It was to allow [KK] to use the Metro’s sign (being the particular and exact sign agreed and set out in the agreement, subject to limited alteration which would not make it noticeably closer to the Morley’s marks), and to force Ameen to change from Mowley’s to Metro’s. I would never have agreed if I knew that [KK] was going to use it to mislead more people into thinking that he had the ability to grant them franchise agreements on the basis that they could use the Metro’s sign without objection from ourselves”.

SS’s written evidence was that he understood the 2018 Agreement to allow KK to use the particular and exact Metro’s sign as depicted in Annex A, “subject to the limited alteration which would not make it noticeably closer to the Morley’s marks”. In cross-examination he said that he did not consider that any changes or modifications made to the Settlement Sign which would bring it closer to the Morley’s Red and White Mark would be reasonable, as the purpose of the Settlement Agreement was to try to reach a compromise whereby KK, who he had been dealing with as an infringer or potential infringer for 8 years, could be allowed to get on with his business under a sign which the Claimant could live with. He said that specific features were added to the Settlement Sign to try and distinguish the Metro’s brand from the Morley’s brand, including the electric blue border around all four sides of the Settlement Sign. However, KK changed it in use to remove the blue border at the bottom of the signs. SS’s oral evidence was that by eliminating it, he was bringing it closer to looking like a Morley’s, and that any modification which made the Settlement Sign look more similar to the Morley’s Red and White Mark was not, in his view, a reasonable modification for the purposes of the 2018 Agreement. SS said that KK also changed the agreed electric blue border to a very dark blue which looks dark navy at night and loses its distinctive nature.

The Claimant also complains about the addition of the strapline to Sign 1, when there is no strapline in the Settlement Sign. SS said in cross-examination that he did not object to a strapline per se, but he did object to the way KK had added it, namely the format and placement to bring it visually closer to the Morley’s Red and White Mark, the white colour, the similar words with an intentional use of capital letters on each, the use of the ellipse. He said it “added meat to the bone of what I feel is an unreasonable modification”, and that it was done intentionally, “to ensure that people viewing the sign quickly or at a distance simply see a red and white logo with a big M, a strapline, ellipses, and the intentional use of capitals in order that they believe that it is the Morley’s mark”.

KK’s evidence is that when he first sketched out his ideas for his Metro’s brand in 2012 he sketched the Metro’s sign on a piece of paper. That included white writing on a red background and “a strapline which stated that we were the “real taste”. He took it to a signwriter and asked him to design the Metro’s Logo. He says that he designed the logo that all of the Metro's stores still use on the signboards today. The photograph he has included in his witness statement is Sign 1, with further writing underneath saying, “Fried Chicken & Burgers – BBQ Ribs – Wings” and two photographs on either side, one of a burger and one of a chicken burger. There is also a narrow blue border along three sides of the sign, but not at the bottom.

I do not accept his evidence that this signboard has remained unchanged since it was designed in 2012, first, because we have now established that he did not open a Metro’s until after June 2015 so I think it was unlikely that he had designed a shop sign as early as 2012 and second, because I prefer SS’s evidence that the electric blue border came out of the settlement discussions and was not something that KK had used before. This was something which KK eventually accepted in cross-examination.

I am also not convinced that the strapline “…It’s The Real Taste” was on KK’s Metro’s sign before the 2018 Agreement was signed. KK said that it was always there. SS said it was not. KK’s written evidence is that when the 2018 Agreement was being negotiated, he asked SS why they were not including within it his Metro’s sign with the strapline “…It’s The Real Taste”, and SS “assured me not to worry and told me that he would let me continue using the sign with the strapline, but told me just to sign the Agreement”. Accordingly, he says, he signed it and continued to use the sign as before, which includes Sign 1, with the strapline. He says that he considered using the Settlement Sign with the strapline was a reasonable modification. It was put to him by Mr Pearson in cross-examination that was not true, but he said it was the truth. He then said that he spoke to his lawyer about it and his lawyer said, “don’t worry we have a reasonable modification, you can use any time not to worry, you sign the agreement”.

I prefer the evidence of SS and find that there was no such conversation at the time of the negotiation of the Settlement Agreement, and that KK’s evidence on this point is simply untruthful. On balance I find that it is more likely than not that KK did not use the strapline before the 2018 Agreement at all, and only began to use it afterwards.

SS says that he knew Metro's shops began opening from early 2019. The first one was a few doors down from a Morley’s shop in Peckham High Street. He discovered that had in fact been opened by one of the Claimant’s own Morley’s franchisees. After a discussion with SS, in which SS told him he was in breach of his Morley’s franchise agreement by opening another fried chicken store, and also using a logo which infringed the Claimant’s trademarks, the franchisee closed his Metro’s store immediately and retained his Morley’s franchise. SS says more Metro’s began to open during 2019 and some of these were being opened by past imitators of Morley’s, against whom the Claimant had obtained injunctions in IPEC. These included those who had previously opened stores under the names “Mawley’s” and “New Morley’s”. Metro's stores were also opening in the general locale of existing Morley’s stores.

The Claimant has mapped the locations of Morley’s and Metro’s stores and notes that the Metro’s stores are all located within 400 metres to 1.2 kilometres of an existing Morley’s store. Morley’s opened its first store outside of London and the southeast in Birmingham in 2022, and Metro’s opened an outlet a mile down the road in Birmingham a matter of months later. In cross-examination, KK said that he never paid any attention to where Morley’s stores were located when making a decision about where to grant franchises. His evidence on this point was a little confused, and it seemed to me that he wanted to avoid the questions, dismissing the Claimant’s maps of locations of Morley’s and Metro’s stores with a wave of the arm, saying that he was not in the map business but in the franchise business and the two were separate. Although he agreed that the location of Morley’s stores and Metro’s stores on the maps he was taken to were accurate, he would not be drawn on whether they were close to each other. The gist of his evidence was that he would make decisions on a case by case basis. He said he relied on potential franchisees to come to him with a proposal, and if he considered it was an area containing people happy to eat his food, and if the franchisee passed his checks, he would agree to the franchise. Mr Pearson asked him if it was merely coincidence, or chance, that Metro’s opened close to Morley’s and he said he did not understand the question, saying “You are asking wrong question. I am upset”. However he denied opening Metro’s to be close to Morley’s. In relation to the Birmingham store, KK said that he did not even know where Morley’s was located in Birmingham. I don’t accept his evidence on these points. I do not consider it likely that he would have agreed to open a Metro’s outlet without knowing exactly where his competitors were nearby. I think it is more likely than not that KK considered any location which was good enough to justify a Morley’s opening was worth considering opening a Metro’s nearby, and so those locations were not merely coincidence.

SS says the Claimant was also increasingly concerned that the sign being used on the new Metro’s stores was not the Settlement Sign that had been agreed. He said it was clear that KK and the Defendants, as well as other more recent franchisees of Metro’s stores who are not defendants in these proceedings, were altering the Settlement Sign to make it much more similar to the Morley’s branding. He also notes that the franchise agreements which have been disclosed by the Defendants as being in place between KK and the Franchisee Defendants, contain a Metro’s logo licensed for use by the franchisees which is not the same as the Settlement Sign.

SS provides some evidence of confusion amongst members of the public which the Claimant says shows that they believe the Metro’s Sign is, or is somehow connected to, the Morley’s brand. He gives one example of being asked what he did for a job by the barista in a coffee shop opposite a Metro’s store. When he said he worked at Morley’s, the barista pointed to the Metro’s store and said, “Oh that one there?” He had to explain that he works at Morley’s and the shop across the road was a Metro’s.

SS gives evidence about the similarity in get-up between Metro’s stores and Morley’s stores. He says that Metro’s have copied the interior closely, including red-brick walls with white grouting, the red and white colour scheme carrying through into the tiles under the front counter (Morley’s being checkerboard squares, Metro’s being round spots), and the identical billboard-style artwork on the side wall, of a distinctively styled woman eating a burger. I have seen photographs showing these features and I accept his evidence. KK was asked about these similarities and was evasive, refused to acknowledge almost any of them, and said that he had never been into a Morley’s shop so did not know if they were similar. I found him unconvincing, and I do not believe he was telling the truth. In my judgment KK’s untruthful evidence that: he developed Sign 1 in the form in which it now is in 2012, the year before he opened his first Metro’s store; that 2013 was the year he opened his first Metro’s store,; that he had been using a sign with a blue border around it and a strapline since before the 2018 Agreement; that he had never been into a Morley’s shop so could not have copied the get-up; that the identical colour-scheme, bricks and advertising photographs and similar tiles in Metro’s stores were not copied from Morley’s stores; were deliberate untruths intended to mislead the Court. I am satisfied that he intended to, and did, get-up Metro’s shops, and develop Sign 1 after the 2018 Agreement, so that they would look as similar to Metro’s shops and Morley’s Red and White Mark as he thought he could get away with.

There is evidence of third parties noting the similarities in get-up of the stores. The Claimant relies on a YouTube video created by a YouTube creator known as The CNSR who visits and posts reviews of fried chicken shops under the name “The Pengest Munch”. In episode 36 he is in Stoke Newington and says in the introduction “We’re here to go to Morley’s, what looks like a reborn Morley’s”. The camera shows him and a companion going towards a Metro’s store. The video cuts to him sitting on a bench eating the food he has purchased, and he says “So just went to …Metro’s. Metro’s is the name. Boy, is thata reborn Morley’s but they came certified.” After reviewing the fries, wings and a chicken burger he says “It’s a new shop, nice presentation. You know they are winning by association, they look like Morley’s, maybe if you were – maybe if you needed glasses and weren't wearing your glasses, you would think “Oh right, Morley’s - what? We’re in East London, alright?””.

The Claimant also relies on a TikTok video in which the creator @m.combe07, who also reviews chicken shops, visits the Portland Rd Metro’s store. As he is about to enter, he looks up at the fascia of the shop, does a double take and says, “I thought this was Morley's!”. He notes that there is no hygiene rating on the window, and looks it up online to find that it has a zero rating. On entering he notes the get-up of the store, saying “Bossman has the Morley's logo... shit – shit - he is even doing it to a T, man.”. He goes on to refer to the chicken that he buys as a “deepfake Morley’s” and notes that, as is captured on camera, that the server who serves him is wearing “a whole Morley’s uniform as well”. The creator concludes by saying that Morley's “needs to sue their ass for trademark infringement basically”. KK accepts thatthe video shows an employee serving in a Metro’s store wearing a Morley’s uniform, but says that is someone who also works at Morley’s, and should have changed into the Metro’s uniform t-shirt instead. I am willing to accept that explanation, but it leads one to wonder how often that happens.

The Claimant also relies on comments on X/Twitter as indicating confusion amongst the general public. These include:

The first three of these seem to be people who have identified Metro’s as being a different entity to Morley’s, but considering Metro’s to be so similar to the Claimant’s shops to amount to “knock-offs”. The second two appear to show genuine confusion about whether Metro’s is a new name for Morley’s, or a variant of it. I am satisfied that was KK’s intention in his choice of get-up of Metro’s stores, including the use of Sign 1.

SS says that the Defendants' use of "MMM" and "Triple M" has also caused wide spread confusion amongst customers and that the Claimant has received reports of, and witnessed, the Defendants' use of these in relation to burgers on various delivery platforms and in Metro's stores. However in cross-examination he could not provide any details of this confusion, and I do not consider that I have evidence of actual confusion arising from this use. KK says that the use of Sign 2 and Sign 3 are mistakes which have arisen because his signwriter, used to supply signage across the Metro’s franchise, in a few isolated instances mistakenly supplied old menu boards. He says that once notified of the alleged infringements by the Claimant, he took steps to remove all references to Sign 2 and Sign 3 from his menus, and instructed the 6^th Defendant and 5^th Defendant respectively to do the same. On balance, I think this is unlikely. I find this was an example of the Claimant seeking to bring his offering closer to that of Metro’s, but realising he had gone too far.

As regards the other Defendants, SS’s written evidence is that although the 3rd Defendant has claimed that he ceased trading in April 2021, SS recently attended his premises in Mitcham, and it remains a Metro’s store. KK’s evidence is that the Mitcham shop remains a Metro’s, but under different ownership, the 3^rd Defendant having sold the franchise to another in April 2021 and opened a new business in New Cross. KK was asked in cross-examination why, if the 3^rd Defendant had left that shop in April 2021, he had disclosed a picture of the Mitcham Metro’s shop front in December 2023 and KK had no real answer to give. KK’s evidence is that this litigation has adversely impacted his business, as he has lost 9 franchisees who have told him they no longer want to operate because of the litigation, and he has been unable to attract franchisees for the Metro’s brand because of it. His evidence is that he believes he would have 50 franchisees now if this litigation had not been hanging over his business. He says that he has also suffered financial losses in the business as he has not charged franchise fees and in some cases franchisees have refused to pay fees, while the litigation was ongoing. KK has not provided any documentary or other evidence to support these contentions. Given my concerns about the credibility and reliability of his evidence, and my findings that he has not been honest about some of his evidence in order to mislead the court and strengthen his case, I treat this evidence, too with caution. I make no findings at this stage about whether he has suffered losses as described or at all.

SS notes that the 4^th Defendant has changed the name of his store to “META” and the 6^th Defendant to “DIYA”. He believes that this amounts to an acceptance by them that they have infringed the Morley’s Marks and needed to change their names. The other Defendants, he believes, continue to trade as Metro’s.

I find it convenient to take the first two issues out of order.