May 31, 2022

Lessons to takeaway in Chinese restaurant dispute

China Tang is a high end Chinese restaurant based in the famous Dorchester Hotel in London. It has been operating since 2005 and is the owner of a figurative trade mark for China Tang (a trade mark featuring the words and a logo). The trade mark covers restaurant and other catering style services. The restaurant brought a claim for trade mark infringement and passing off against a Chinese takeaway in Barrow operating under the exact same China Tang name.

In response to the claim from the restaurant the takeaway sought to defend based on two factors. The first of these was that they had been trading for approximately twelve years prior to receiving the claim and that there hadn’t been any actual confusion in that time, and the second was that the geographical separation between the respective businesses meant that there was less likelihood of confusion between the businesses.

The Court decided that neither of the above factors was sufficient to defeat the claim for trade mark infringement. The restaurant’s trade mark and the name of the takeaway sounded identical and looked almost identical, with the only difference being the logo featured in the trade mark. There was also very little difference between the services the trade mark protects (restaurant services) and the services that the takeaway offered. The near identical nature of the marks meant that there was a likelihood of confusion regardless of any other factors the Defendant might try to rely on. The Court also dismissed a claim from the Defendant that there was honest concurrent use of the names on the basis that even a simple internet search would have identified the Claimant’s business.

The two factors the Defendant relied on were however sufficient to defeat the claim for passing off. In a passing off claim it is necessary to prove misrepresentation so the lack of actual evidence of confusion was very important and the Court also found that the Claimant’s goodwill was based in London and did not extend as far north as Barrow. This demonstrates the difficulties a passing off claim faces in comparison to a trade mark claim.

The key lesson to take away from this is the country wide protection that is provided by a registered trade mark. The Defendant’s contention that there was a geographical separation between the parties and the lack of any evidence of actual confusion were sufficient to defeat the claim in passing off but was not relevant to the question of trade mark infringement. The act of registration was therefore crucial to the success of the Claimant in this matter.

If you have any queries on any issues raised by this story please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or by email at legal@mcdanielslaw.com.

in: EU/International, Trade Marks

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