Trade Mark Lawyer Update: GNAT And Company Ltd & Anor V West Lake East Ltd & Anor [2022] EWHC 319 (IPEC)

• Published date: 26 September 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Waterfront Solicitors LLP
• Author: Ms Maria-Elena Cacace

This case review from our trade mark expert, Maria-Elena Cacace, highlights the pitfall of failing to do a thorough trade mark clearance search and then being clobbered several years down the line by a major brand owner.

On 16 February 2022, Hacon HHJ handed down judgment¹ for a case heard in the IPEC on 2 December 2021. The dispute was in relation to the UK registered series mark no. UK00002415093 (the 'Mark') in the following form with word elements 'CHINA TANG':

The Claimants

The Mark was owned by the first claimant from 29 August 2005 and registered in class 43 in respect of 'Restaurant services; cocktail lounge services; bars; cafes; catering services; snack bars; self-service restaurants; mobile catering services; cafeterias; tea houses' The Mark was licensed to the second claimant, who runs the 'China Tang' restaurant at the Dorchester Hotel on Park Lane in London. The claimants alleged infringement of the Mark contrary to sections 10(2) and (3) of the Trade Marks Act 1994 (the 'TMA 94') and passing off.

The Defendants

The defendants operated a Chinese takeaway in Barrow-in-Furness also under the name 'China Tang'. In their Defence, the defendants pleaded honest concurrent use on the basis that they had been using the name 'China Tang' since 2009 and had no knowledge of the claimants' business when selected the name. They also counterclaimed for partial revocation of the Mark for non-use, insofar as it was registered for 'cafes; cafeterias; and self-service restaurants'.

Average Consumer

Trade mark infringement is assessed through the eyes of the average consumer and both counsel agreed that the average consumer is a user and/or potential user of restaurant or catering services, meaning almost every adult and child in the UK.

Counterclaim

Hacon HHJ first dealt with the counterclaim because under s11A TMA 94, non-use can be a defence in infringement proceedings. The claimants did not argue that the Mark had been put to genuine use in relation to 'cafes and cafeterias'. Instead, they relied on the approach to a 'fair trade mark specification'², saying that a fair specification would include services provided by cafes and cafeterias. Hacon HHJ agreed dismissing the counterclaim and said that the average consumer

would consider both a cafe and a cafeteria to be a type of restaurant and that deleting either would limit the scope of 'restaurant services' by implication.

s10(2) TMA 94 Infringement

The dispute in relation to s10(2) was whether there was a...