MOMOFUKU loses its trade mark! Use it or lose it: Why genuine use of trade marks is vital

The High Court handed down their judgment in Nissin Foods Holdings Co., Limited (Appellant) and MomoIP LLC (Respondent) on 12 March 2025, allowing an appeal from a Hearing Officer’s decision at the UKIPO. Deputy Judge Iain Purvis KC overturned the decision, stating it had been based on an erroneous finding that the earlier registered mark MomoIP relied upon had been genuinely used within the UK.

The Appellant, Nissin Foods, is a food company founded by Momofuku Ando in 1948 in Osaka, Japan. In 1958, Ando discovered the production technology that became the basis of instant noodles, and his chicken ramen became the world’s first instant noodles. Today, the Nissin Foods Group are a conglomerate that creates and develops market-leading brands.

The Respondent, MomoIP, is the holding company for the Momofuku culinary brand, founded by David Chang in 2004. Since opening his first restaurant, Momofuku Noodle Bar, he has been named one of “the most influential people of the 21^st century”. Momofuku has restaurants in the United States, Canada and Australia, as well as a line of restaurant-grade products for home cooks.

Background

The case involved an appeal from a decision of a Hearing Officer in relation to a number of consolidated actions. These included the following

1. An application for revocation for non-use (brought by Nissin Foods)
2. An application for a declaration of invalidity (brought by Nissin Foods)
3. An application for a declaration of invalidity (brought by MomoIP)

The marks in dispute between the parties were for the same word mark “MOMOFUKU”, with MomoIP owning the most senior mark filed in 2008. Nissin Food’s earliest mark was filed next, in 2018.

Despite the consolidated actions before the Hearing Officer, the parties agreed that the only issue in appeal was whether MomoIP’s UK mark of “MOMOFUKU” for restaurant related services ought to be revoked for non-use. The relevant 5-year period for assessing use was from 21 April 2017 to 20 April 2022 – if the mark was not used during this time, Nissin Foods argued that it should be revoked and no longer relied upon to challenge Nissin Food’s own trade marks and applications. Indeed, should MomoIP’s earliest MOMOFUKU mark be revoked, Nissin Foods becomes the senior mark owner. However, if MomoIP’s “MOMOFUKU” trade mark was not revoked, then the mark could have been used to invalidate Nissin Food’s earliest trade marks, and oppose the latter’s latest application for a MOMOFUKU mark.

What did the High Court decide?

The High Court overturned the Hearing Officer’s decision, finding that the evidence presented by MomoIP was insufficient to establish genuine use of the “MOMOFUKU” mark in the UK. In arriving at its decision, the High Court pointed to a number of errors, notably the misinterpretation of 3 separate promotional activities in the Hearing Officer’s decision:

• Mr Chang released a cookbook called “MOMOFUKU”, with 2,600 copies sold via Amazon.co.uk. Whilst accepted as evidence of genuine use by the Hearing Officer, the High Court stated that “the Hearing Officer had misunderstood the evidence about the extent to which the cookbook had been sold in the UK.”. The reference to the 2,600 copies sold was not correct. There were in fact 2,600 reviews of the book on Amazon.co.uk, and there was no evidence to show that these reviews were from UK residents.
• The Hearing Officer referred to 3 ‘pop-up restaurants’ as a promotional activity for the bricks and mortar restaurants operated by MomoIP overseas. These were found to be directed at UK customers, evidenced from the fact that the UK is the 4^th largest customer base for the MOMOFUKU restaurants, and over 8,000 EU/UK-based customers on its email distribution list by the Hearing Officer. However, the High Court determined that only 1 of the 3 could be used for assessing genuine use, as it was the only one that took place in the relevant period. The Hearing Officer had mistakenly taken all 3 events into account. The Shoreditch event (which was within the relevant period), or at least the evidence submitted in respect of it, lacked any “MOMOFUKU” branding, and Mr Chang cooking for a small group was not seen as genuine promotion of the mark in relation to restaurant services. The judge also found no link between the 8,000 EU/UK email subscribers and promotional activity, given these could simply be visitors from the UK that had attended the restaurant in New York, and there was no evidence to show the content of the emails.

• The Hearing Officer also referred to a Nike campaign, where a trainer called Nike SB Dunk High MOMOFUKU, released by Nike in 2017 and still available on the website in 2022, as an example of several campaigns in the UK. The High Court judge noted that the trainer featured only a peach logo, not the word mark “MOMOFUKU”, and found no real evidence of promotion of the mark in question – just a few footwear retail listings with no mention of the restaurant, and no proof of any sales.

In addition to the above, the Hearing Officer also referred to MomoIP using Momofuku.com, and that 1.5% of the website traffic was derived from the UK. Although the Hearing Officer stated that the mere presence of such a website is not evidence of the use of the name in the UK, this evidence did contribute to her decision making. The High Court stated that this again is not sufficient, only proving that there are people in the UK who are aware of the MOMOFUKU restaurant in New York, and other locations. It does not in fact establish use of the mark in the UK, or targeting of the UK by the website.

This decision offers several useful insights into trade mark law, particularly regarding the concept of genuine use. The genuine use requirements entail actual use of the registered mark ‘MOMOFUKU’ as it appears on the register by its proprietor (without changes to the distinctive character of the mark).

What constitutes ‘genuine use’ and territorial issues

To be considered genuine use, use must be real commercial exploitation, must be of the mark as it is registered, and must be in relation to goods and services the mark is registered for, or relied upon. The Nike collaboration, for example, featured a peach logo linked to MomoIP rather than the actual registered word mark ‘MOMOFUKU’

It is not the amount of use that is important, but the nature and form, and questions such as whether the use was ‘justified in the economic sector concerned to maintain or create a share in the market’. The use must be to promote goods or services for which the mark is registered, in the UK.

Territoriality, in evidence of genuine use is important. International acclaim for restaurants in USA and Australia was not relevant and did not qualify. Amazon reviews which do not also show that those reviews are from UK users who had purchased the book, were not useful. The Nike trainers did not contain the ‘MOMOFUKU’ mark, just a peach logo (even if it was a collaboration with MomoIP), and it was not in relation to restaurant services offered to UK customers. Instagram followers from the UK did not constitute use to promote restaurant services in the UK and instead indicated only awareness of the brand globally. Website traffic did not go much further than indicating that there are people in the UK who are aware of the MOMOFUKU restaurant in New York and elsewhere.

The High Court concluded that MomoIP did not meet the burden of proof to show genuine use of the trade mark in the UK, and as a result, the failure to demonstrate this ultimately led to MomoIP having their mark revoked in the UK..

In relation to evidence presentation in such cases, this case serves as a clear reminder of the importance of admitting evidence (if available) that satisfies all the necessary requirements. Any promotional activity relied upon must fall within the relevant five-year period and show or evidence the date of the document in some way. All of the evidence submitted should be curated to demonstrate use of the mark in relation to the services for which it is registered (in this case, they needed evidence for restaurant services). This also emphasises the importance of both the evidence-gathering process and maintaining proper records of use.

The importance of the senior mark

As the High Court judge stated, “the results of all six actions now stand or fall on the result of this single point on this Appeal.” There were previously multiple actions, including invalidity and opposition actions against Nissin Foods’ later marks, as well as arguments as to the similarity or dissimilarity of certain goods and services, with MomoIP seeking to stop Nissin Foods from registering the latest MOMOFUKU mark. However, by the time of this Appeal, all those other issues had fallen away, and the case rested on the single issue of the earliest mark’s genuine use.

If the appeal case had failed, Nissin Foods could have lost all its trade marks and been subject to claims of infringement, given their marks were all filed after MomoIP’s first mark, filed in 2009.

The case highlights the importance of chronology in trade mark disputes. If one trade mark is revoked for non-use, it can shift the balance – giving the other party the earlier rights and making them the holder of the senior mark. MomoIP ultimately lost its most senior right because it was unable to prove genuine use of the ‘MOMOFUKU’ mark during the relevant 5-year period. In trade mark law, having the earlier registration isn’t enough – you must also ensure that that registered mark has been put to genuine use in trade.

It also shows why parties must proceed with care in making trade mark infringement allegations or filing oppositions, because without solid evidence of genuine use, you risk losing the rights you rely on to challenge others.

Routes of Appeal

If a Hearing Officer at the UKIPO issues a decision that you want to challenge, there are two main appeal options:

• Appeal to the Appointed Person
• Appeal to the High Court

The different forums have different characteristics, and as such should be considered carefully. An appeal to the Appointed Person is typically quicker and more cost-effective than going to court. It is also less formal, as the Civil Procedure rules do not apply. It is important to note that the Appointed Person’s decision is final, with no further right of appeal. Cost recovery is limited to scale costs – whilst your cost exposure may be low, your recovery is also similarly limited.

Alternatively, if you choose the more formal and costly route of appealing to the High Court, there is the potential to appealing further to the Court of Appeal (and further thereafter), subject to permission being granted. This means you have a further option should the first appeal not succeed. In the High Court, costs are ordered under the CPR, and as a broad average, winning parties can expect around 70% recovery.

Should you have any issues in relation to trade mark infringement, oppositions at the UKIPO, or complex queries relating to the genuine use of trade marks, contact Lakmal Walawage or any  member of the Intellectual Property team. They will be able to guide you through the process and discuss your options.

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