From Beijing To Barrow Via Mayfair

• Published date: 10 February 2023
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Marks & Clerk
• Author: Mr Erik Rouk and Michael Shaw
• topic: Advertising Law,Trademark,Intellectual Property

Issues

• Trade mark infringement
• Comparison of logo trade marks, comparison of takeaway and restaurant services
• assessing reputation, and
• the ability to rely on honest concurrent use as a defence.

TL;DR:

• A trade mark dispute between high end restaurant located at the Dorchester Hotel in London and a small Chinese take away located 300 miles away.
• After 12 years of coexistence, the infringement proceedings reinforced that actual confusion is not required for a likelihood of confusion to exist and emphasised the importance of due diligence through trade mark searches.
• Despite the relative popularity of the applicant, without evidence of funds spent on advertising, the economic aspect of reputation may not be sufficient when assessing whether unfair advantage has been taken.
• Confirmed that honest concurrent use will rarely be a successful defence to trade mark infringement

The full lowdown

The 2022 decision of the Intellectual Property Enterprise Court in relation to a trade mark dispute between a prestigious Chinese restaurant located at the Dorchester Hotel in London and a local Chinese take away in Barrow-in-Furness (GNAT and Company Limited and China Tang London Limited -vs- West Lake East Limited and Honglu Gu [2022] EWHC 319 (IPEC)) raises a number issues in...