(Research by Lauren Fisher)
The recently decided case of Gnat and Co Ltd v West Lake East Ltd has highlighted the importance of trade mark clearance searching. Trade mark clearance searching involves searching sources such as the Internet and relevant trade mark registers, in order to identify earlier and potentially conflicting trade mark rights. If businesses fail to carry out reasonable searching before settling on a brand name, they may be increasingly unable to rely on ‘honest concurrent use’ of the chosen brand (section 7 TMA 1994) as a defence to trade mark infringement.
The case concerned a dispute between a Chinese restaurant in London called ‘China Tang’ (the claimant, Gnat and Co Ltd), and a Chinese takeaway in Cumbria operating under the same name (the defendant, West Lake East Ltd). It was alleged that that the Chinese takeaway’s use of the name ‘China Tang’ amounted to infringement of the London restaurant’s registered trade mark rights. The owner of the Chinese takeaway in Cumbria argued that the defence of ‘honest concurrent use’ applied, as it was unaware of the London restaurant operating under the same name.
The Claimant’s Trade Mark (UKTM Registration No. 2415093)
It was decided that the Chinese takeaway had no defence to trade mark infringement, because the owner failed to conduct sufficient research before settling on the brand name ‘China Tang’. If the owner had conducted a simple Internet search for China Tang, it was likely this would have identified the London restaurant already operating under the same name. Although the Chinese takeaway owner was unaware of the London restaurant, it was not sufficient to rely on mere ignorance as a defence to trade mark infringement.
The Defendant’s Takeaway Restaurant
As a result of the China Tang decision, it is especially important for businesses to carry out internet and relevant trade mark register searches prior to launching new brands, in order to reduce the risk of inadvertently infringing another party’s existing trade mark rights. Due to the increasing ease of which searches can be conducted via the Internet, the level of searching that is considered ‘reasonable’ is likely to continue to rise.
At Albright IP, we offer an initial complimentary search of the UK and EU Trade Mark Registers for identical word Marks.
The UKIPO joined the World Intellectual Property Organization’s Global Brand Database on 18 July 2022, this will become an additional tool we will use at Albright IP to assist clients with more comprehensive trade mark searching. The Global Brand Database contains over 50 million records from 71 national and international trade mark databases. Therefore, useful for conducting trade mark searches on a more global basis, although careful professional analysis of the results is to be recommended, and charges may be incurred in providing this.
For further details of the services we provide, please read our article on Trade Mark Searching and Clearance here.