The Intellectual Property Enterprise Court (IPEC) recently held that a fast food franchise had infringed multiple trade marks belonging to Morley’s (Fast Food) Ltd. This is the first time that the IPEC has applied the recent decision of Lifestyle Equities v Ahmed where the Supreme Court held that joint tortfeasors in cases of trade mark infringement must have had “knowledge of the essential facts which make the act done wrongful” to have any liability, an addition to the existing test.
Morley’s is the owner of three trade marks: the “Morley’s Mark”, the “Triple M Mark”, and the “Morley’s Red and White Mark”, which are all registered in class 29 for fast food products and class 43 for fast food takeaway services. It was presented during the proceedings that Morley’s is a well-known and popular brand, proving the marks’ validity.
There were seven defendants to the proceedings, the seventh being the owner of the London fast food chain Metro’s, who have already had previous disputes with Morley’s for copying. The most recent dispute, in 2018, involved a settlement agreement whereby Metro’s, then called ‘Mowley’s’, had agreed to re-brand and reasonably modify their logo so that it was different to Morley’s. The other six defendants were all franchisees of Metro’s.
The proceedings were started because Morley’s alleged that the modifications that were made to the logo by Metro’s actually increased the similarity of the marks. The IPEC agreed.
Significantly, all seven defendants were held to have liability as joint tortfeasors in the infringement of Morley’s marks because the court was satisfied that they had knowledge of the essential facts which made the act wrongful.
If you have any questions on the above, feel free to contact a member of the team at 0191 281 4000 or alternatively at legal@mcdanielslaw.com.
