The risk of not doing any kind of trade mark search before launching a new business was clear in a recent IPEC case in which His Honour Judge Hacon found that the China Tang trade mark was infringed.
The case was brought by the owner of the China Tang restaurant at the Dorchester Hotel in London against a Chinese takeaway called China Tang in Barrow-in-Furness (GNAT and Company Ltd & Anor v West Lake East Ltd & Anor [2022] EWHC 319 (IPEC)).
Scope of trade mark
The claim was based on a series trade mark (pictured above) registered in 2005 for “Restaurant services; catering services; cafes; cafeterias; and self-service restaurants” in class 43.
The defendant has run the China Tang restaurant in Barrow-in-Furness since 2009 (pictured). It argued that the claimant’s mark should be partially revoked as it had not been used for all the services covered.
The judge rejected this argument, saying that “Restaurant services” should be given its full meaning, including restaurant services provided by cafes and cafeterias. However, the claimants had agreed to delete “self-service restaurants”.
Likelihood of confusion
Turning to infringement under section 10(2), HHJ Hacon found that WLE’s takeaway services were “closely similar” to the claimants’ “restaurant services”.
He went on to find that there had been no evidence of confusion in the 12 years during which both restaurants had traded and there were differences in location and trading style between them. This had likely prevented confusion in the real world.
However, the absence of actual confusion did not necessarily mean there was no likelihood of confusion, said the judge:
Because of the aural identicality of the Trade Mark and the sign, the close visual similarity between them and the close similarity between WLE’s services and the restaurant services of the Trade Mark specification, in particular the services of low cost restaurants which typically offer takeaway services, I take the view that there is a likelihood of confusion.
A supplementary claim under section 10(3) failed because neither unfair advantage nor detriment had been established.
The judge also rejected a passing off claim, saying it was highly likely there had been no misrepresentation: if anyone had been aware of both businesses, there would be no reason to suppose they believed there to be a connection between them.
No honest concurrent use
The judge made some particularly interesting comments when discussing the defence of honest concurrent use. He found that, in choosing the name of the restaurant, the defendant had not carried out any kind of search – or if a search had been done, its results must have been ignored. Had a search been conducted, the defendant would likely have had to seek legal advice.
While there were arguments both ways and he had “sympathy” for the defendant, HHJ Hacon ultimately said that:
in the modern climate of easy trade mark and internet searches, I think that if a party starts to use a trading name without appropriate advice and simple searches, such use will not have been honest concurrent use without some reason why it should be taken to have been so. There was no such reason in the present case.
What does this mean?
Businesses are therefore on notice that they are expected to take at least basic steps to check their trading names or other signs, for example by doing a simple internet search for identical terms or using a free tool such as TMview. More sophisticated searches using specialised tools and appropriate legal advice will also be likely to be expected where there are grey areas.
In other words: ignorance of earlier rightsholders is not an excuse!
To find out more about the issues raised in this case including trade mark disputes and filing contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com