Applicant's mark | Earlier marks |
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EUTM 810010Class 42: Providing of food and drink; cafes and cafeteria services; canteen services; catering services; restaurant and self-service restaurant services; snack bars. EUTM 3102233 Class 35: The bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods from an Internet website specialising in marketing of food, drinks, general merchandise and restaurant services; retail services; providing information about the provision of food and drink via electronic networks and the Internet, and through publication of print media. Class 43: Providing information about the sale of merchandise via electronic networks and the Internet, and through publication of print media. EUTM 4718334 Class 43: Providing food and drink; providing of food and drink by means of on-line ordering; food and drink takeaway services; cafes and cafeteria services; canteen services; catering services, restaurants and self-service restaurant services, snack bars; services for providing food and drink; providing information about the provision of food and drink. | Class 29: Prepared meals; instant meals; snack foods; preparations and ingredients therefor; soups; prepared, preserved, dried, cooked and/or frozen fruits and vegetables; reduced fat content dairy products; potato crisps and potato chips; all consisting wholly or principally of noodles. Made out of rice and wheat. |
Cable Logic Europe Ltd filed a UK application to register the WAKAYAMA Premium Quality Noodles logo (above left) for goods in Class 29.
Wagamama Limited, the restaurant chain, opposed the application on the basis of its registered and unregistered rights and reputation in WAGAMAMA and the WAGAMAMA logo (above right). It also claimed that its marks were entitled to protection as well-known marks in line with article 6bis of the Paris Convention. Cable Logic denied all grounds of opposition.
Wagamama filed evidence of use of its marks in relation to restaurants serving "Japanese inspired cuisine, offering both take away and eat in service”. The evidence showed that Wagamama had opened its first UK restaurant in 1992 and, by the time of the contested application, operated 124 restaurants across the UK with an annual turnover of £257,774,000. A handful of press articles were filed attesting to Wagamama's popularity and repute in the UK in relation to Japanese or pan-Asian food. One article stated "Wagamama has become somewhat of a British institution in recent years."
The goods covered by Cable Logic's application were found to be similar (to a medium degree) to Wagamama's services - provision of food and drink; online retail of food and drink. Although not similar in nature, purpose, or method of use, the Registrar found that the goods and services were complementary to one another and that consumers might believe that they originated from the same source (the relevant consumer being the general public with an average degree of attention).
Wagamama claimed that the pictorial element of Cable Logic's mark simply described the goods applied for. Both Cable Logic and the UKIPO disagreed with this – the size and position of the picture meant that it was found to be of about equal importance to the name WAKAYAMA. Cable Logic claimed that the name WAKAYAMA was taken from a geographical location in the Kansai Prefecture in Japan, which is known for its noodles and from where Cable Logic's products were sourced. However, the UKIPO did not consider this to be a relevant consideration or point of difference between the marks, since most UK consumers would be unaware with that meaning. Overall, the marks were found to be similar, with high phonetic similarity in particular.
The Office concluded that the pictorial element of the contested mark was sufficient to avoid direct confusion between the marks; that is, it was unlikely that consumers would mistake one mark for the other). However, the close similarity of the word elements of the marks (WAGAMAMA vs WAKAYAMA) meant that there was a risk of indirect confusion, whereby consumers might misremember the marks and conclude that the contested mark was a variant mark of Wagamama's. This risk existed for all of the goods applied for. The opposition therefore succeeded in full.
To take away
This case is a useful reminder that, even where marks might not be similar enough that they are likely to be mistaken for one another, the risk of "indirect confusion" may still be significant.
Case ref: O/810/18
