Wagamama wins TM dispute against ‘Wakayama’ instant noodles
Wagamama, a Japanese-inspired British restaurant chain, has successfully halted the registration of a rival trademark after the UK Intellectual Property Office (IPO) ruled that it sounds similar to the restaurant chain’s mark.
UK-based company Cable Logic Europe applied to register the trademark ‘Wakayama’ for “prepared meals, instant meals” and other food products “all consisting principally of noodles, made of rice and wheat”, in August 2017.
In a decision by the IPO on December 19, 2018, Wakayama was denied registration as it would cause a likelihood of confusion to the average consumer.
In its opposition to the mark, Wagamama claimed the ‘Wakayama’ trademark is visually similar to its own and aurally almost identical.
The restaurant chain also argued the goods and services offered by Wakayama were similar to Wagamama’s, which would probably cause confusion among consumers, a statement which the IPO upheld.
Wagamama also cited its far-reaching reputation in the UK and said Wakayama’s use of the mark would cause the public to believe there is an economic connection between Wagamama and Wakayama, when “no such connection exists”.
It also alleged that Wakayama would gain an unfair advantage by benefiting from the marketing of the Wagamama brand. It said this may alter the economic behaviour of consumers if they chose Wakayama’s goods instead of Wagamama’s services.
Wagamama also claimed that granting a trademark to Wakayama may damage Wagamama’s reputation if Wakayama received any form of negative publicity.
In response, Cable Logic filed a counterstatement denying all grounds of opposition from Wagamama.
Cable Logic said that “if pronounced clearly by a reasonable person, Wakayama does not sound the same as Wagamama”.
This was directly contested by the IPO’s Heather Harrison in her decision, as she said the two marks are aurally alike to a “high degree”. Specifically, Harrison said the first and last syllables “are identical”, while the second and third syllables “differ in the consonant sound (GA; KA) but share the same vowel sound.
The IPO also ruled that there would be a likelihood of confusion for consumers as there is a similarity of the goods offered by both parties.
It said the average consumer “rarely has the opportunity to make direct comparisons between trademarks” and must instead rely on “the imperfect picture of them he has retained in his mind”.
It stated that the average consumer is likely to “imperfectly recollect” the verbal elements of Wagamama when looking at Wakayama and conclude the latter mark is being used by Wagamama.
Harrison ordered Cable Logic to pay Wagamama £1,000 ($1,275) in costs.
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