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

The Defendants accept that the Claimant’s marks are inherently distinctive and that they have acquired distinctiveness through use.

They accept in each case that they have used each of the Signs complained of in the course of trade and in relation to either identical or similar goods and services.

The 8^th Defendant admits infringement of the Triple M Mark pursuant to section 10(1) of the Act by his use of Sign 3 on his Deliveroo menu. He avers in the defence that such use is not ongoing. KK, in his witness statement, says that this use was the result of a mistake made by a third party unrelated to the 8^th Defendant.

The Defendants otherwise deny that they have infringed any of the Claimant’s Marks as alleged or at all on the basis that there is no likelihood of confusion between the Claimant’s Marks and the Signs complained of. In particular, they deny that there is any similarity between Sign 1 and the Morley’s Red and White Mark.

Further, the 3^rd Defendant, 4^th Defendant and 6^th Defendant deny that any use by them complained of is ongoing, as they say that each has ceased trading under the Metro’s franchise.

The Claimant contends that KK is liable as a joint tortfeasor along with the Franchisee Defendants for the acts of infringement alleged against them in relation to their respective uses of Sign 1.

The Claimant alleges at paragraphs 19 to 23 of the POC that KK is in breach of the 2018 Agreement on the basis that:

The Claimant pleads that the 2018 Agreement confers no rights upon the Franchisee Defendants, who were not parties to the 2018 Agreement and were not even purported licensees of KK at the date the settlement was reached.

KK denies that he is in breach of the either clauses 5.2 or 5.3 of the 2018 Agreement and contends that no issue of joint tortfeasance arises. In relation to Sign 2, the 6^th Defendant and KK contend that there is no likelihood of confusion, as is also said by the 5^th Defendant, KK and the 8^th Defendant in relation to Sign 3.

In the counterclaim, the Franchisee Defendants sought a declaration of invalidity and the revocation of both the Morley’s Mark and the Morley’s Red and White Mark, but Ms Watkinson confirmed in closing submissions they no longer pursue this claim. KK counterclaims against the Claimant for breach of the 2018 Agreement and groundless threats. The Claimant denies these claims.