Nissin v MomoIP: Is promotional activity enough to prove genuine use of a trade mark?

In this article, IP Director Lloyd Lane explores the High Court decision in Nissin Foods Holdings Co. Ltd v MomoIP LLC, which sets out some useful guidance for proving genuine use of a UK trade mark where the core goods or services are provided outside the UK. 

Background to the case

Nissin Foods Holdings Co. Ltd (Nissin) appealed to the High Court following a UKIPO hearing officer’s decision concerning a series of opposition, invalidity and cancellation actions brought by MomoIP LCC (MomoIP) and Nissin respectively, concerning each other’s MOMOFUKU word marks. 

Nissin owned and had applied for a range of UK trade marks for the word MOMOFUKU in relation to various foodstuffs. MomoIP owned and had applied for a range of UK trade marks for the word MOMOFUKU in relation to restaurant services.

By the time of the appeal, the case hinged on whether the UKIPO hearing officer had correctly found that MomoIP had proven genuine use of its 2009 MOMOFUKU word mark in relation to restaurant services in the UK. 

It was accepted that MomoIP had used the MOMOFUKU mark in respect of restaurant services based outside of the UK (in New York, Australia and Canada). These restaurants had received international acclaim and were regarded as ‘destination’ restaurants. Various promotional activities were alleged to have occurred in the UK. 

Key issues

The key questions before the Court were:

1. Can use of a UK trade mark for goods/services provided outside of the UK ever establish genuine use in the UK?
2. If so, was the type of promotional / incidental use shown in this case sufficient?

Outcome

On the first point, the High Court held that as a matter of principle the fact that the goods or services were provided outside the UK did not preclude a finding of genuine use in the UK. However, the key question was whether the use was in accordance with its essential function, which is to guarantee the origin of the services for which it has been registered, to create or preserve a market for those goods or services.

The High Court therefore held that promotional use in the UK in relation to famous ‘destination’ restaurants outside the UK could amount to genuine use in the UK.

However, in this case the High Court held that the hearing officer’s analysis contained “errors of fact and illogical assertions not justified by the evidence”. This meant the High Court had to reassess the evidence. 

Key takeaways

The High Court held that the activities relied upon were insufficient to prove genuine use in the UK, as there was very little evidence of use of the trade mark which tied directly back to the destination restaurants. What use there was seemed largely incidental and peripheral. So in summary:

1. Promotional activities for core services provided outside the UK can, in principle, amount to genuine use of such core services in the UK if they are carving out a market in the UK (for example, if the promotion means that consumers in the UK know to book services provided outside the UK).
2. However, substantial evidence is likely to be required if you are running an argument on these grounds. Such evidence should show direct promotion of the relevant services outside the jurisdiction, and not just minor or incidental use.