Brand Interchange

Tag: High Court

  • Momofuku: A Noodle Bar Drama

    Momofuku: A Noodle Bar Drama

    Case Name: Nissin Foods Holdings Co., Limited v MomoIP LLC

    Citation: [2025] EWHC 561 (Ch)

    Judge: Iain Purvis KC, sitting as a Deputy Judge of the Chancery Division

    Decision: Here

    Trade Marks

    Nissin Foods Trade MarksMomo IP’s Trade Marks
    NoPriority / Filing DateCNoPriority / Filing DateC
    ITM 141809126 Oct. 201729, 30UKTM 906646558 (‘558)6 Feb. 200843
    UKTM 80141809126 Oct. 201729, 30UKTM 357544506 Jan. 202143
    UKTM 378100025 April 202229, 30ITM 162417122 Sept. 202143

    Summary

    In an appeal from the Hearing Officer to the High Court, Mr Purvis KC (sitting as a Deputy Judge) has held that MomoIP’s UK trade mark ‘558 for MOMOFUKU was not put to genuine use, providing useful guidance on the application of the law of genuine use in the United Kingdom.

    Background

    Nissin Foods is a food company founded by Momofuku Ando in 1948 in Osaka, Japan, known for the development of the world’s first instant noodles chicken ramen.

    MomoIP is the holding company for the MOMOFUKU culinary brand, which was established by chef David Chang in 2004 in New York, USA. Mr Chang’s steamed bao and ‘meaty’ tasting vegetarian chickpea hozon ramen were the cuisine du jour in the 2010s. Bar a pop-up in Shoreditch, it does not have any UK restaurants.

    Nissin Foods and MomoIP registered (and applied for) trade marks in the United Kingdom for MOMOFUKU in classes 29 and 30 and class 43 respectively. Nissin Foods subsequently brought three actions challenging the validity of some of MomoIP’s trade marks and MomoIP in turn brought three actions challenging the validity of some of Nissin Foods’ trade marks and applications.

    On appeal only one issue remained, namely whether MomoIP’s trade UKTM ‘558 (the original registration of the six subject to the proceedings) had been put to genuine use within the United Kingdom during the relevant period. 

    Law

    In easyGroup Ltd v Nuclei Ltd & Ors [2023] EWCA Civ 1247, Arnold LJ summarised the law relating to genuine use:

    106.  … the principles may be summarised as follows:

    (1)  Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark…

    (2)  The use must be more than merely token, that is to say, serving solely to preserve the rights conferred by the registration of the mark …

    (3)  The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin …

    (4)  Use of the mark must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns … Internal use by the proprietor does not suffice … Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter … But use by a non-profit making association can constitute genuine use …

    (5)  The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, that is to say, use in accordance with the commercial raison d’être of the mark, which is to create or preserve an outlet for the goods or services that bear the mark…

    (6)  All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including: (a) whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods and services in question; (b) the nature of the goods or services; (c) the characteristics of the market concerned; (d) the scale and frequency of use of the mark; (e) whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them; (f) the evidence that the proprietor is able to provide; and (g) the territorial extent of the use …

    (7)  Use of the mark need not always be quantitatively significant for it to be deemed genuine. Even minimal use may qualify as genuine use if it is deemed to be justified in the economic sector concerned for the purpose of creating or preserving market share for the relevant goods or services. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor. Thus there is no de minimis rule …

    (8)  It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use …

    Hearing Officer’s Decision

    The Hearing Officer concluded that UKTM ‘558 had been put to genuine use. In doing so she relied on the following during the relevant period (21 April 2017 to 20 April 2022) to support her decision:

    • Cookbook Sales: She noted that over 2,600 copies of the MOMOFUKU cookbook had been sold via Amazon.co.uk, although this was later found to be incorrect as it referred to reviews, not sales.
    • Website Traffic: MomoIP’s US website received traffic from the UK, with varying numbers of visits over the years.
    • Pop-Up Events: MomoIP ran a 2-day MOMOFUKU pop-up restaurant in Shoreditch, London, which was sold out and served 96 customers.
    • Promotional Activities: MomoIP partnered with Nike to create a special edition trainer, although there was no evidence of sales in the UK.
    • Customer Base: The UK was the 4th largest customer base for MOMOFUKU’s restaurants in the USA, with many UK-based followers on Instagram and customers on its email distribution list 2021.

    Appeal

    Mr Purvis KC, found that the Hearing Officer’s decision was vitiated by a series of errors of fact and illogical assertions not justified by the evidence before her. He reasoned as follows:

    • The Hearing Officer misunderstood the evidence relating to the Amazon listing of the MOMOFUKU cookbook, suggesting that thousands of copies had been sold when there was no such evidence.
    • The Hearing Officer took into account three pop-up events when in fact there was only one relevant event in Shoreditch, with little or no evidence of promotion of the New York restaurant.
    • The evidence of the Nike trainers should never have been relied on, as it established effectively nothing.
    • The Hearing Officer’s attempt to link these promotional activities to the reputation of the MOMOFUKU restaurants amongst UK consumers was illogical and not justified by the evidence.

    The judge therefore concluded that the appeal succeeded and ‘558 had not been put to genuine use.

  • English Cases (03.03.25 – 07.03.25)

    English Cases (03.03.25 – 07.03.25)

    A list of cases issued before the English intellectual property courts for w/c 3 March 2025:

    CourtCase NumberClaimantDefendant
    Intellectual Property CourtIL-2025-000047Soho Home LimitedNext Retail Limited
  • Brand Interchange

    Brand Interchange

    Our first newsletter is now out. The newsletter is designed
    to be essential reading for all inhouse
    brand lawyers, providing
    news, case updates and events in
    the United Kingdom. This month, we
    address 3D shapes and the latest
    instalment in the Slush Puppie Wars.

    Brand Interchange Newsletter February 2025.pdfDownload

  • J&J Snack Foods v. Ralph Peters & Sons

    J&J Snack Foods v. Ralph Peters & Sons

    Court: High Court of Justice, Business & Property Courts, Intellectual Property List

    Judge: Mr Justice Fancourt

    Judgment: Here

    Trade Mark: [SLUSH PUPPIE]

    Issue: Trade Mark Infringement

    Summary

    A Slush Puppie has long been a favourite for many generations of children on a hot summer’s day. The use of the brand, however, has descended into a trade mark and passing off dispute between J&J Snack Foods and Ralph Peters & Sons, culminating in a worldwide freezing order being granted in relation to up to £10 million of the latter’s assets.

    That order has now been discharged, with the court concluding that J&J Snack Foods had not given fair presentation when obtaining the order. The judgment is a useful reminder of the heavy burden on applicants when applying for such relief. Meanwhile, the litigation continues.

    Background

    Parallel proceedings have been ongoing in Ohio, USA since 2019. Around October 2024, J&J Snack Foods commenced proceedings before the English Courts. The claim is unusual in that Ralph Peters & Sons is not alleged to be a primary tortfeasor, but a joint tortfeasor with one of its group companies (unnamed in the litigation), Frozen Brothers.

    The commencement of proceedings was followed by a without notice application on 3 December 2024 for, among other things, a worldwide freezing order. This was directed to £10 million of Ralph Peters & Sons’ assets and £10 million of its director and majority shareholder’s assets, including two of his homes. This was granted shortly before Christmas, with the return date listed after Christmas.

    On 17 January 2025, Ralph Peters & Sons sought an order discharging, among other things, the freezing order. It argued that the partner at the law firm responsible for J&J Snack Foods’ application had failed to give full and frank disclosure (sometimes referred to as fair presentation).

    Full and frank disclosure

    The burden on applicants for full and frank disclosure in applications for freezing orders was summarised in Uconinvest LLC v Jysan Holding LLC [2024] EWHC 1532 (Ch) as follows:

    “Applications for without notice freezing orders, whether domestic or worldwide, are now a routine part of the business of the Chancery Division and the Commercial Court. It is easy therefore to regard them as “normal”, but any hearing where only one side of the case is heard should be regarded as exceptional. Further, freezing orders that are broad in their reach are capable of having very serious consequences for a respondent. The price of obtaining such relief without notice to the respondent is a heavy responsibility to ensure that the matter is fairly presented to the court, not slanted or partial, and that the points that the respondent would wish to make were they present, so far as able to be anticipated, are fairly put before the court for consideration. That is particularly so when serious allegations are made against the absent parties.”

    Reasoning

    The judge concluded that the freezing order should be discharged. His reasons included, among others, as follows:

    • Failure of full and frank disclosure: J&J Snack Foods had failed to disclose several key points during the without notice hearing:
      • It did not explain why it was appropriate for the applications to be made without any notice to the Ralph Peters & Sons;
      • It failed to distinguish between the ‘Phase 1’ (the use of SLUSH PUPPIE) and ‘Phase 2’ (the use of SLUSHY JACK) claims, particularly the weakness of the ‘Phase 2’ claim and its impact on the quantum of the claim;
      • It did not provide solid evidence of a serious risk of Ralph Peters & Sons dissipating assets or making itself judgment-proof;
      • It did not address the relevance of the passing of time from 2020 to December 2024 in relation to the risk of dissipation and the need for a without notice hearing;
      • It did not explain the argument that gross profits made by Frozen Brothers was not the proper basis for the quantum of a claim against Ralph Peters & Sons
    • Lack of real risk of Ralph Peters & Sons making itself judgment-proof: The Judge was not convinced that there was a real risk of the Ralph Peters & Sons taking steps to make itself judgment-proof. J&J Snack Foods did not provide sufficient evidence to justify this risk, especially considering the long-standing litigation in Ohio and Germany without any evidence of Ralph Peters & Sons taking such steps. The dishonesty alleged against Mr Peters did not lie at the heart of J&J Snack Foods’ claim and did not of itself give rise to a strong inference of a risk of dissipation of assets.