Morley’s (Fast Foods) Limited v Jeyatharini Sivakumar & Ors

A family of trade marks requires a common distinctive element used in a series. A merely common letter, or a business name absent from the challenged signs, is insufficient.

Likelihood of confusion must be assessed for each relevant class of average consumer and in all relevant circumstances. A finding of confusion for one substantial class is sufficient. Similarity in get-up, enhanced distinctiveness, the consumer’s level of attention and the circumstances of use may materially contribute to the assessment.

Where a settlement permits reasonable modifications to a sign, the modifications must not increase its similarity to the mark said to have been infringed. A contractual term will not be implied where it lacks necessity or conflicts with express provisions.

The claimant operated a South London fast-food franchise under a portfolio of registered trade marks, including the Morley’s Red and White Mark and the Triple M Mark. The defendants operated or franchised Metro’s fast-food outlets and used several signs which the claimant alleged infringed those marks.

The claimant also relied on a 2018 settlement agreement with the seventh defendant, which permitted use of a specified Metro’s sign and reasonable modifications to it. The defendants disputed infringement, relied on the agreement, and counterclaimed for breach of contract and groundless threats. The trial concerned liability only, including the family-of-marks issue, similarity and likelihood of confusion, contractual consent, joint tortfeasance and the proposed implied term.

1. Family of marks. The claimant’s marks did not comprise a family. The common word “Morley’s” appeared in only two marks and was absent from the challenged signs. The common letter “M” was not sufficiently distinctive, and the marks were not characterised by repetition of the same distinctive prefix or suffix. The relationship between “Triple M” and “MMM…” was only oblique.
2. Average consumer and confusion. There were two relevant classes: children, young people, students and families, who paid medium to low attention; and late-night or early-morning customers, some intoxicated, who paid low attention. It was sufficient that a substantial part of one class was likely to be confused. Sign 1 was visually and conceptually similar to the Morley’s Red and White Mark to a medium degree. Its use in similar store get-up, combined with the mark’s enhanced distinctiveness and the circumstances of late-night use, created a likelihood of confusion under section 10(2)(b) of the Trade Marks Act 1994.
3. Sign 2, used for an “MMM Burger”, could naturally be pronounced “Triple M” and was similar to the Triple M Mark to a medium-high degree. The use caused a likelihood of confusion under section 10(2)(b). Sign 3 was identical to the Triple M Mark apart from an insignificant change in case and was used for identical goods and services. It therefore infringed under section 10(1).
4. Settlement agreement. “Reasonable modifications” meant modifications which did not increase similarity to the Morley’s Red and White Mark. Adding the strapline, removing part of the blue border, changing its colour and reducing the spacing between letters were not reasonable modifications. Sign 1 therefore fell outside the permitted sign and the seventh defendant’s use breached the agreement.
5. The franchisee defendants could not rely on the settlement agreement. They were not parties, were excluded by its third-party provisions, and the proposed implied term was neither necessary nor consistent with express terms. The seventh defendant knowingly authorised and procured the franchisees’ infringement in pursuit of a common design, having knowledge of the essential facts making the acts wrongful. The claimant was entitled to injunctions against defendants continuing to use the signs. The counterclaim for breach of contract failed. Costs, interest and consequential orders were reserved.

First-instance liability judgment. The judgment itself does not state any prior appellate history.