The plaintiff, Wagamama Limited, owner of registrations on the trademark and service mark WAGAMAMA, operated a popular restaurant in London under that name since 1992. In 1995, the plaintiff learned that the defendants, City Centre Restaurants plc and City Centre Restaurants (UK) Limited, were opening a restaurant under the name RAJAMAMA, which was subsequently changed to RAJA MAMA'S. The plaintiff initiated interlocutory proceedings, alleging that both names constituted trademark infringement and passing off, but ultimately sought a speedy trial, which was granted.
The Court found in favor of the plaintiff on both grounds.
Infringement
The plaintiff had gathered evidence before trial that some members of the public had made an association with WAGAMAMA when seeing the name RAJAMAMA, while others had also confused the two restaurants. The plaintiff argued that the defendants were thus liable for infringement within the meaning of the Trade Marks Act 1994, which states that infringement is found where "there exists a likelihood of confusion on the part of the public, which includes the likelihood of association" between the sign and the trade mark. The Trade Marks Act 1938, by contrast, required that a defendant's mark be "likely to deceive or cause confusion" for infringement to be found, commonly known as "classic infringement". The wording of the Trade Marks Act 1994 seems to broaden the definition of infringement to include the likelihood of association between two marks, without the need to prove the likelihood of confusion. The broader concept, described by the judge as "non-origin association", is derived from Benelux law, under which a trademark functions, not only as an indicator of origin, as in the United Kingdom, but also as an indicator of quality and, through use, such trademark can assume a goodwill all its own. In other words, the goodwill of a registered mark is infringed when consumers associate a junior mark with the senior registered mark.The plaintiff argued that as a matter of statutory interpretation, the Trade Marks Act 1994 should be construed as including non-origin association, but the judge rejected this argument on construction grounds. The plaintiff also argued that the EU's First Council Directive to Approximate the Laws of the Member States Relating to Trademarks mandated such an interpretation, and offered three grounds for this assertion: 1) the Council's minutes indicated that the Directive encompassed Benelux law; 2) it was common knowledge among European trademark practitioners that the wording "likelihood of association" was adopted to incorporate the Benelux law; and 3) the Directive was intended to harmonize national trademark laws, which could not be achieved unless the Trade Marks Act 1994 encompassed the previously established Benelux law.
The judge rejected the first argument on the ground of insufficient evidence and the second on the ground that a popular belief was not a basis to force an English court to adopt the Benelux view. He rejected the third argument on the ground that, while it was proper for an English court to recognize decisions rendered by courts in other member states of the European Union, an English court was not bound to adopt a Benelux court's interpretation merely because the Benelux Court was first to rule on the issue.
The judge then determined that the proper interpretation of the language of the 1994 Act was to find that non-origin association was not intended. He found support for this from a number of European cases and from the preamble of the Directive, which states that the function of a trademark is, inter alia, an indicator of origin in particular. The judge reasoned that to adopt the broader concept of likelihood of association would extend the "monopoly" that a trademark registration affords a trademark registrant. The judge believed that, if the Council had intended to expand trademark protection to this extent, it would have said so in such a way that it would be obvious and unambiguous; as it was, there was no clear indication that this was intended.
The judge nevertheless then decided that the plaintiff had produced clear evidence that there had been confusion between the two marks in the minds of the public which was sufficient to make out a case of "classic infringement".
Passing Off
The judge also found that the plaintiff had made out a sufficient case for passing off. The plaintiff's restaurant enjoyed great popularity at the time that the defendants opened their restaurant, and, in the judge's opinion, in view of the similarity between the respective names, the defendants had passed off their restaurant as being associated in some way with the plaintiff's restaurant.The effect of this decision is that, notwithstanding attempts at harmonization among the member states, the definition of trademark infringement within the European Union is now unclear, since it appears that trademark infringement will be construed on a narrower basis in the United Kingdom than, for example, in the Benelux countries.
