- The owner and manager of "China Tang", an 'opulent' Cantonese restaurant based in the Dorchester Hotel, for which the claimants own the trade mark, brought a claim against a takeaway operating under the same name on grounds of trade mark infringement and passing off.
- The defendants denied the claim, including on the basis that there was no evidence of any consumer having confused the two businesses over 12 years of simultaneous trading.
- The IPEC found that infringement had nonetheless occurred – the mark and the sign were identical (save for the figurative element of the mark), and the respective services closely similar, which denoted a clear likelihood of confusion (irrespective of whether any actual confusion had taken place to date).
"China Tang" is a high-end Cantonese restaurant situated in the famous Dorchester Hotel, and has been in operation since 2005. The claimants collectively own and manage this restaurant and possess the rights to UK Trade Mark No. 2,415,093 – a figurative mark featuring the words "China Tang" – registered in respect of class 43 (including for restaurant services and catering services) (the "Mark").
Since 2009, the defendants have owned and managed a takeaway in Barrow-in-Furness which also operates under the name "China Tang" (the "Sign").
The claimants filed proceedings for trade mark infringement under s.10(2) and s.10(3) of the Trade Marks Act 1994 ("TMA") as well as for passing off in respect of the defendants' use of the Sign.
Whether, given that in the defendants' 12 years of trading there had been no instances of confusion between their business and the claimants', there was nonetheless a likelihood of confusion under s.10(2) TMA.
Whether the claimants' restaurant had enough of a reputation, at the point in time when the Sign was first used, to give rise to possible infringement under s.10(3) TMA.
Whether the defendants' shift to accept orders online from 2016 onwards constituted a materially different way of using the Sign, such as to establish a new, later date from which to measure the claimants' reputation in respect of the s.10(3) TMA claim.
The claimants succeeded in their s.10(2) TMA infringement claim. Whilst HHJ Hacon accepted that (i) no confusion over the course of 12 years’ simultaneous trading had occurred, and that (ii) there was a geographical separation between those who would be aware of the claimants' business and those who would be aware of the defendants', neither of these factors precluded a likelihood of confusion under s.10(2) TMA. The aural identicality (and close visual similarity) between the Mark and the Sign, and the similarity between the respective restaurant and takeaway services, rendered any potential mitigating factors immaterial. The judge rejected the defendants' pleading of 'honest concurrent use', given that even a basic online search by the defendants when setting up their business would likely have revealed the claimants’ website or reference to it.
The lack of confusion and the geographical distinction between the businesses were relevant, however, for the passing off claim: (i) the lack of confusion demonstrated a lack of deception among the relevant public regarding a connection between the respective businesses, which undermined a finding of misrepresentation, and (ii) the claimants' London-based goodwill was not found to stretch to Barrow-in-Furness (where the defendants were based). As such, the passing off claim failed.
The claimants’ s.10(3) TMA claim was also unsuccessful – their evidence did not show sufficient knowledge of their business among the relevant public (which, for restaurant services, was “almost every adult and child in the UK”) to afford them the requisite status of a trade mark with a reputation under s.10(3) TMA. The judge found that the defendants had not materially changed their use of the Sign by permitting locals to view their menu and order online from 2016 onwards, and so there was no basis to reassess the reputation of the claimants’ trade mark as at this later date.
This decision underlines that the relevance of actual confusion to a s.10(2) TMA claim is highly fact-dependent – where the marks are similar enough to create an objective likelihood of confusion, this outweighs the absence of any evidence of actual confusion.
Authored by Joel Smith, Anneka Dalton, and Femi Williams.
This article first appeared in WTR Daily, part of World Trademark Review, in (April 2022). For further information, please go to www.worldtrademarkreview.com.