From Beijing To Barrow Via Mayfair

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

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 relation to trade mark infringement that are of continuing interest moving forward.

The Claimant had registered the trade mark in question in August 2005; the Defendant had adopted its mark in 2009. Both businesses operated under the same name, "China Tang", but had adopted different logos:

UK TM No. UK00002415093 as registered by the Claimant:

Vs

Use of the mark by the Applicant - ¹

Comparison of logo trade marks and assessment of a likelihood of confusion

Although the logos were very different in appearance, Judge Hacon found that the dominant distinctive element of the trade marks were the words "China Tang".

Prior to the trial, the Claimant agreed to remove "self service restaurants" from their registration after a counterclaim for partial revocation by the Defendant. Nevertheless, the court found that even with this amendment, the remaining services, particularly "restaurant services", were sufficiently similar to "take away services" and that there was a likelihood of confusion. Judge Hacon therefore found that the requirements for infringement were met under s.10(2) of the Trade Marks Act 1994. This decision reinforces that the lack of any evidence of actual confusion on the market has...