U.K. News | Wagamama Prevents ‘Wakayama’ Trademark Registration for Instant Noodles

opposition
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Japanese-inspired British restaurant chain, Wagamama, has successfully opposed the registration of rival trademark ‘Wakayama’.

It would be recalled that on August 14, 2017, British company, Cable Logic Europe, sought to register Wakayama in the UK for prepared meals, snack foods, and instant meals containing noodles made of rice and meat. Wagamama opposed the registration on grounds that the marks are visually and orally similar or almost identical. The UK Intellectual Property Office on December 19, following the opposition, found that registration would cause confusion to the average customer.

” When determining whether there is a likelihood of confusion, a global assessment of the competing factors must be made (Sabel at [22]). I must consider the various factors from the perspective of the average consumer and decide whether they are likely to be confused. The factors considered above have a degree of interdependency (Canon at [17]), so, for example, a high degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa. Confusion can be direct (where the average consumer mistakes one mark for the other) or indirect (where the average consumer realises the marks are not the same but puts the similarity that exists between the marks/goods down to the responsible undertakings being the same or related). In making my assessment, I must keep in mind that the average consumer rarely has the opportunity to make direct comparisons between trade marks and must instead rely upon the imperfect picture of them he has retained in his mind59. When determining whether there is a likelihood of confusion, a global assessment of the competing factors must be made (Sabel at [22]). I must consider the various factors from the perspective of the average consumer and decide whether they are likely to be confused. The factors considered above have a degree of interdependency (Canon at [17]), so, for example, a high degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa. Confusion can be direct (where the average consumer mistakes one mark for the other) or indirect (where the average consumer realises the marks are not the same but puts the similarity that exists between the marks/goods down to the responsible undertakings being the same or related). In making my assessment, I must keep in mind that the average consumer rarely has the opportunity to make direct comparisons between trade marks and must instead rely upon the imperfect picture of them he has retained in his mind”

Heather Harrison from the Intellectual Property Office had this to say on the Likelihood of Confusion.
Wagamama_Wakayama

Although Cable logic denied all of the grounds for opposition, arguing that when pronounced clearly by a reasonable person Wakayama does not sound the same as Wagamama”, the UK Intellectual Property Offices found that the two marks were extremely similar, especially as the first and last syllables “are identical.”

“In my view, the device in the application is sufficiently prominent and distinctive to avoid direct confusion. However, I must consider whether it is likely that the average consumer will imperfectly recollect the verbal elements (WAGAMAMA/WAKAYAMA) and conclude that the contested mark is a variant mark being used by the opponent. In short, I find that this is likely. The similarities between these elements are such that, particularly when the highly distinctive nature of the earlier mark is taken into account, and notwithstanding the differing consonants, the average consumer is likely to misremember the words WAGAMAMA/WAKAYAMA and be indirectly confused. There is a likelihood of confusion in respect of all the contested goods.”

Heather Harrison from the Intellectual Property Office stated the above

Cable Logic was ordered to pay Wagamama £1,000 in costs.

Trademark Opposition Information:

IN THE MATTER OF APPLICATION NO. 3250126 BY CABLE LOGIC EUROPE LTD TO REGISTER AS A TRADE MARK: WAKAYAMA

AND

IN THE MATTER OF OPPOSITION THERETO UNDER NO. 410891 BY WAGAMAMA LIMITED

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About Ufuoma Akpotaire 247 Articles
Ufuoma is a Senior Editor and Director of Regulatory Policy at NLIPW. She assists clients in the protection of copyrights, trademarks and patents. She counsels clients regarding validity and infringement matters and has experience acting against the infringement of IP and addressing counterfeit issues. She holds a Masters degree (LL.M.) from Columbia Law School, New York and a law degree from the University of Nigeria (LL.B. Honors). She is admitted to practice law in Nigeria and in the State of New York. Ufuoma cut her teeth in the intellectual property practice groups of some of the largest law firms in Nigeria and has years of experience working with major non-profit organizations in New York. Email: uakpotaire@nlipw.com

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