Nissin Foods Holdings Co., Limited v MomoIP LLC

Genuine use of a trade mark requires real commercial exploitation in the relevant territory, assessed by reference to all relevant facts and the essential function of the mark. Activities in the United Kingdom may promote services supplied abroad, but they must be shown to create or preserve an outlet in the United Kingdom. Mere availability of a website, overseas reputation, foreign customer awareness, or unconnected promotional material is insufficient. An appellate court may overturn a specialist tribunal’s evaluative decision where it contains material factual errors, gaps in logic, inconsistency, or failure to consider a material factor.

Nissin appealed from a decision of a Hearing Officer acting for the Registrar of Trade Marks dated 26 March 2024. Six consolidated opposition, revocation and invalidity proceedings concerned the parties’ MOMOFUKU marks.

The parties agreed that the outcome depended on whether MomoIP had made genuine use in the United Kingdom of its earlier word mark for restaurant services during the period 21 April 2017 to 20 April 2022. The Hearing Officer found genuine use, although the restaurants themselves were principally located outside the United Kingdom. The central issue was whether the United Kingdom activities relied upon were sufficient to establish genuine territorial use.

1. The appeal was allowed. The Hearing Officer had erred in finding that MomoIP proved genuine use in the United Kingdom of the MOMOFUKU mark for restaurant services during the relevant period.
2. The applicable principles were not disputed. Genuine use requires actual, non-token use consistent with the essential function of a trade mark and real commercial exploitation capable of creating or preserving an outlet for the relevant goods or services. Use in the United Kingdom may promote services ultimately supplied abroad, but the evidence must establish genuine commercial exploitation in the United Kingdom.
3. The Hearing Officer’s factual and evaluative conclusions could be reviewed because they contained material errors and illogical inferences. The cookbook evidence did not show that 2,600 copies had been sold in the United Kingdom; it showed only reviews on Amazon.co.uk. The Nike trainer evidence did not establish use of MOMOFUKU in relation to restaurant services. Only one of the three pop-up events fell within the relevant period, and there was little evidence that it promoted the overseas restaurants.
4. The Hearing Officer had also failed to establish a causal link between those limited activities and the United Kingdom customer base, Instagram followers and email subscribers. Those matters could reflect general international reputation or United Kingdom visitors travelling to New York, rather than United Kingdom promotional activity.
5. Website accessibility from the United Kingdom was insufficient. The Hearing Officer did not find that the website targeted United Kingdom customers in accordance with the principles identified in Lifestyle Equities CV v Amazon UK Services Ltd [2022] EWCA Civ 552 and Pammer v Reederei Karl Schlüter GmbH & Co. KG and Hotel Alpenhof GesmbH v Heller EU:C:2010:740.
6. The Hearing Officer’s decision was therefore vitiated by errors of fact and logic. Counsel were invited to provide a Minute of Order reflecting the decision.

• High Court (Chancery Division): appeal from the Hearing Officer’s decision dated 26 March 2024. Appeal allowed.