Nissin is a Japanese company established in 1948, specialising in food production, in particular instant noodle convenience foods. The founder, Momofuku Ando, was the inventor and first marketer of instant noodles. Nissin’s instant noodles were first marketed in 1958, and, since then, Nissin has expanded to offer its convenience food products across Asia, North and South America, and Europe. In 2021, overall sales of Nissin’s “Cup Noodles” reached 50 billion.
Dehns has provided services to Nissin since at least as early as February 2000, but has more regularly provided filing/prosecution and searching services to them, and handled contentious matters for them, since 2022, via their Japanese representatives, SOEI Patent & Law Firm.
A US-based restaurant group founded by chef David Chang (the trade marks of which are owned by MomoIP LLC (Momo)) has been operating under the name MOMOFUKU for a number of years, and stated in the press that Nissin’s founder (Momofuku Ando) was the inspiration. Momo filed a UK trade mark application for a composite mark comprising the name “Momofuku” alongside a peach logo, and Nissin sought advice and assistance from Dehns to file an opposition to the trade mark application, based on Nissin’s registrations of the trade mark MOMOFUKU in the UK.
Adam Kellett, Associate and Trade Mark Attorney at Dehns, reviewed the matter and identified the “MOMOFUKU” marks owned by both parties in the UK. Adam reviewed the matter and noted that both parties already had various registrations of “MOMOFUKU” marks in the UK – Momo for restaurant services, and Nissin for foodstuffs. Adam advised that Momo had the earliest trade mark registration in the UK which, at face value, could be relied on by Momo to invalidate the registrations Nissin wished to rely on in the proposed opposition. However, Adam advised that Momo’s registration was old enough to be cancelled on grounds of non-use as of a date prior to the effective filing dates of Nissin’s registrations. Initial online searches suggested that Momo had never opened any restaurants in the UK, and that there had been limited to no commercially significant use of the mark in the UK for the registered (restaurant) services. If Momo’s registration could be cancelled on grounds of non-use, Nissin would have the earliest registered rights and should be able to successfully oppose Momo’s latest application, and invalidate other registrations owned by Momo. Adam also advised on possible passing off and bad faith grounds that the client could potentially rely on. As the parties both had existing registrations, Adam also advised on intervening rights defences and the implication of forced coexistence if no action was taken. Adam also advised on possible corresponding action before the EUIPO.
Adam reviewed Nissin’s position and devised a strategy to secure its rights in the mark MOMOFUKU. On instruction from the client, Adam filed a non-use revocation actions against Momo’s earliest registration of MOMOFUKU and another registration, of MOMOFUKU MILK BAR, as well as an invalidation action against another Momo UK registration, of MOMOFUKU NOODLE BAR, and an opposition against Momo’s latest application, all based on Nissin’s registrations of MOMOFUKU. Adam also filed a new UK trade mark application for Nissin. Adam was assisted by Tiernan Graham, then a trainee at Dehns, who since qualified as a Trade Mark Attorney in August 2024. Momo retaliated with invalidation actions against Nissin’s UK registrations and an opposition against Nissin’s new application. One non-use revocation action was undefended by Momo, and the remaining six proceedings were later consolidated by the UK IPO.
Adam provided strategic advice through the pleadings stages, to ensure that Nissin would be pursuing consistent (and non-contradictory) arguments across the different proceedings, and to minimise the exposure of Nissin’s own registrations to cancellation in the event that Momo managed to prove genuine use. Adam received feedback the following feedback from the instructing Japanese firm: “Our client was delighted with your well thought out proposal.” Adam and Tiernan reviewed and advised on the evidence filed by Momo (regarding genuine use and likelihood of confusion), and prepared and collated Witness Statements and evidence filed on behalf of Nissin, cheifly regarding similarity of goods and regarding the scale of the market in which Momo’s evidence of use needed to be contextualised. They instructed external Counsel (Michael Edenborough KC) to advocate at the appointed UK IPO hearing, and worked with Counsel to prepare and file detailed skeleton arguments criticising the proof of use filed by Momo.
Following a hearing in January 2014, the UK IPO issued a decision in favour of Momo, finding that Momo had made genuine use of its earliest registered mark in the UK for restaurant services, and so (predominantly) prevailed in all of the consolidated actions. The Hearing Officer deemed Momo to have “targeted” UK consumers to promote restaurant services rendered in the USA. Specifically, the Hearing Officer inferred that awareness of the US restaurants among UK consumers, and their attendance at those US restaurants, was the result of active targeting and promotion by Momo, rather than passively obtained. The alleged targeting/promotional activities in the UK chiefly consisted of (a) allegedly selling a cookbook, (b) allegedly selling trainers, and (c) three pop-up attendances by its chefs at UK restaurants, totalling 5 evenings during the course of 7 years, and serving only a small number of covers each evening.
Nissin decided to appeal the decision to the High Court. Adam and Tiernan sought assistance from Paul Harris, Dehns’ Head of Litigation, and his team. Together with Counsel they prepared and lodged the Appellant’s Notice, skeleton arguments and bundles, and assisted Counsel at the appointed hearing in December 2024. Adam worked closely on the skeleton arguments to fine-tune and elaborate on the criticisms of the evidence and the Hearing Officer’s reasoning, and to differentiate the case from facts of a prior legal precedent. The appeal focussed on several errors of fact, illogical assertions and unsupported inferences in the first instance decision. This involved forensic interrogation of the evidence and the Hearing Officer’s reasoning.
As a result of these efforts, Dehns succeeded in overturning the UK IPO’s decision. The High Court found that the UK IPO Hearing Officer was wrong to decide that Momo had proven genuine use of its mark. Agreeing with Dehns’ arguments, the Judge concluded that the Hearing Officer had misunderstood certain evidence, had taken into account irrelevant evidence, and had based the decision on a number of inferences that were illogical and/or not shown by the evidence. He found that the Hearing Officer had misunderstood evidence regarding availability/sales of the cookbook, that the evidence relating to the trainers was effectively irrelevant, and that the evidence relating to the pop-up events did not show the promotion of Momo’s restaurant services in New York. Ultimately, there was no evidence of active targeting or a causal link between any activities relied on by Momo and awareness of the US restaurants among UK consumers. Accordingly, Nissin was victorious in having Momo’s registrations cancelled and their application refused, and has been able to defend and retain ownership of its founder’s name.
The burden for having a decision overturned is substantial. Dehns’ forensic interrogation of the evidence, and clear identification of where and how the Hearing Officer had gone wrong, secured a hard-fought victory for Nissin. Dehns was able to demonstrate its expertise in dealing with complicated contentious disputes and interconnected proceedings, and with handling a substantial volume of evidence. Dehns also deployed its breadth of experience in handling both Registry and Court proceedings.
Adam later ensured accurate implementation of the decision by the Registry across the trade marks involved, and advised Nissin on the implications of the outcome, its strategy going forward, and again regarding possible action before the EUIPO.
The instructing Japanese firm shared that “We have been very satisfied with the excellent services provided by Dehns and yourself, particularly in handling Nissin’s High Court appeal case”, highlighting Adam’s “meticulous advice and outstanding support in writing”.