Momofuku: A noodle bar drama

In an appeal from the Hearing Officer to the High Court, Mr Purvis KC (sitting as a Deputy Judge) has held that MomoIP’s UK trade mark ‘558 for MOMOFUKU was not put to genuine use, providing useful guidance on the application of the law of genuine use in the United Kingdom.

Case Name: Nissin Foods Holdings Co., Limited v MomoIP LLC
Citation: [2025] EWHC 561 (Ch)
Judge: Iain Purvis KC, sitting as a Deputy Judge of the Chancery Division
Decision: Here

Trade marks

Background

Nissin Foods is a food company founded by Momofuku Ando in 1948 in Osaka, Japan, known for the development of the world’s first instant noodles chicken ramen.

MomoIP is the holding company for the MOMOFUKU culinary brand, which was established by chef David Chang in 2004 in New York, USA. Mr Chang’s steamed bao and ‘meaty’ tasting vegetarian chickpea hozon ramen were the cuisine du jour in the 2010s. Bar a pop-up in Shoreditch, it does not have any UK restaurants.

Nissin Foods and MomoIP registered (and applied for) trade marks in the United Kingdom for MOMOFUKU in classes 29 and 30 and class 43 respectively. Nissin Foods subsequently brought three actions challenging the validity of some of MomoIP’s trade marks and MomoIP in turn brought three actions challenging the validity of some of Nissin Foods’ trade marks and applications.

On appeal only one issue remained, namely whether MomoIP’s trade UKTM ‘558 (the original registration of the six subject to the proceedings) had been put to genuine use within the United Kingdom during the relevant period.

Law

In easyGroup Ltd v Nuclei Ltd & Ors [2023] EWCA Civ 1247, Arnold LJ summarised the law relating to genuine use:

106.  … the principles may be summarised as follows:

(1)  Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark…

(2)  The use must be more than merely token, that is to say, serving solely to preserve the rights conferred by the registration of the mark …

(3)  The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin …

(4)  Use of the mark must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns … Internal use by the proprietor does not suffice … Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter … But use by a non-profit making association can constitute genuine use …

(5)  The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, that is to say, use in accordance with the commercial raison d’être of the mark, which is to create or preserve an outlet for the goods or services that bear the mark…

(6)  All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including: (a) whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods and services in question; (b) the nature of the goods or services; (c) the characteristics of the market concerned; (d) the scale and frequency of use of the mark; (e) whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them; (f) the evidence that the proprietor is able to provide; and (g) the territorial extent of the use …

(7)  Use of the mark need not always be quantitatively significant for it to be deemed genuine. Even minimal use may qualify as genuine use if it is deemed to be justified in the economic sector concerned for the purpose of creating or preserving market share for the relevant goods or services. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor. Thus there is no de minimis rule …

(8)  It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use …

Hearing officer’s decision

The Hearing Officer concluded that UKTM ‘558 had been put to genuine use. In doing so she relied on the following during the relevant period (21 April 2017 to 20 April 2022) to support her decision:

• cookbook sales: She noted that over 2,600 copies of the MOMOFUKU cookbook had been sold via Amazon.co.uk, although this was later found to be incorrect as it referred to reviews, not sales
• website traffic: MomoIP’s US website received traffic from the UK, with varying numbers of visits over the years
• pop-up events: MomoIP ran a 2-day MOMOFUKU pop-up restaurant in Shoreditch, London, which was sold out and served 96 customers
• promotional activities: MomoIP partnered with Nike to create a special edition trainer, although there was no evidence of sales in the UK
• customer base: The UK was the 4th largest customer base for MOMOFUKU’s restaurants in the USA, with many UK-based followers on Instagram and customers on its email distribution list 2021

Appeal

Mr Purvis KC, found that the Hearing Officer’s decision was vitiated by a series of errors of fact and illogical assertions not justified by the evidence before her. He reasoned as follows:

• the Hearing Officer misunderstood the evidence relating to the Amazon listing of the MOMOFUKU cookbook, suggesting that thousands of copies had been sold when there was no such evidence
• the Hearing Officer took into account three pop-up events when in fact there was only one relevant event in Shoreditch, with little or no evidence of promotion of the New York restaurant
• the evidence of the Nike trainers should never have been relied on, as it established effectively nothing
• the Hearing Officer’s attempt to link these promotional activities to the reputation of the MOMOFUKU restaurants amongst UK consumers was illogical and not justified by the evidence

The judge therefore concluded that the appeal succeeded and ‘558 had not been put to genuine use.