Intellectual Property Enterprise Court

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

Fecha: 07-Jun-2024

Submissions

Submissions

138.

The Claimant submits that KK is the driving force behind all the other Defendants’ infringements, but focusses its submissions on the infringements of Morley’s Red and White Mark by the use of Sign 1. It submits that by granting licences to the Franchisee Defendants, KK has authorised, caused, procured, enabled and assisted them, in a common design, in those infringements.

139.

KK submits that no issue of joint tortfeasance arises, although he admits that he authorised and/or procured the Franchisee Defendants’ use of Sign 1 pursuant to his franchise agreements with them, as part of the running of the Metro’s Franchise. His submission appears to be solely based on a denial that the Franchisee Defendants are liable in trade mark infringement as alleged by the Claimant, but I have found that they are so liable for their use of Sign 1, which infringes the Morley’s Red and White Mark. In circumstances where:

KK was not only aware of the Morley’s Red and White Mark but had been injuncted from using his previous “New Mawleys” brand as an infringement of that mark;

ii)

the Claimant had brought proceedings for infringement of the same mark against his new “Metro’s” brand, where those proceedings were settled by entry into the 2018 Agreement which permitted him to use the Settlement Sign; and

iii)

I have found, as was fairly put to him in cross-examination but he denied, that he deliberately developed the get-up of his Metro’s stores and Sign 1 to make them as similar to the Morley’s stores and Morley’s Red and White Mark as he thought he could get away with;

I am satisfied that KK had reasonable grounds for knowing, and should have appreciated, that Sign 1 was infringing Morley’s Red and White Mark. Accordingly, I am satisfied that by his grant of licences of Sign 1 in the franchise agreements he has knowingly authorised and procured the infringements I have found by the use complained of, in a common design with the Franchisee Defendants, is a way that is more than de minimis, and so he is jointly liable, with them, for those infringements.