Court Finds Family-run China Tang Takeaway In Cumbria Infringed Park Lane Restaurant's Trade Mark

• Published date: 15 June 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Maucher Jenkins
• Author: Dr. Janet Strath

The Intellectual Property Enterprise Court (IPEC) has held that the CHINA TANG trade mark, used for a Cantonese restaurant called "China Tang" at the Dorchester Hotel in London, was infringed by the running of a Chinese takeaway in Barrow-in-Furness under the name "China Tang" by West Lake East Ltd (WLE).

Background

Back in 2005, GNAT and Company Limited (GNAT) registered the series mark CHINA TANG shown below for among other things, "Restaurant services; catering services; cafes; cafeterias; and self-service restaurants" in class 43:

GNAT licensed the mark to China Tang London Limited (CTL), which had run an opulently decorated Cantonese restaurant called "China Tang" at the Dorchester since 2005. In contrast, Mr Gu, the sole director and owner of West Lake East Limited (WLE), ran a Chinese takeaway in Barrow-in-Furness. WLE had started trading in 2009. Mr Gu and his wife owned the freehold in WLE's business premises and WLE had traded under the name "China Tang" at all times. Some images of the shop front and a sample menu are shown below:

GNAT and CTL alleged that Mr Gu and WLE had infringed the CHINA TANG mark. WLE and Mr Gu argued that the differences in location and style between an upmarket restaurant in Park Lane and a modest takeaway in Barrow militated against there being confusion in the real world, asserted honest concurrent use and counterclaimed for partial revocation of the CHINA TANG mark because of non-use, insofar as it was registered for "cafes; cafeterias; and self-service restaurants" (but not restaurant or catering services).

Decision

HH Judge Hacon found that the average consumer was a user or potential user of restaurant or catering services; in other words almost every adult and child in the UK. This broad characterisation applied whether or not the specification of the CHINA TANG mark included "cafes", "cafeterias", and "self-service restaurants".

GNAT and CTL agreed to delete "self-service restaurants" from the specification of the CHINA TANG mark. The judge dismissed WLE and Mr Gu's counterclaim to limit the specification of the CHINA TANG mark beyond the agreed deletion because "the average consumer would consider both a cafe and a cafeteria to be a type of restaurant". Therefore, deleting either "cafes" or "cafeterias" from the specification of the CHINA TANG mark would, by implication, limit the scope of "restaurant services" and would, in thewords of the judge, "be liable to mislead".

Due to the aural identicality of the...