Burgerista Operations GmbH v Burgista Bros Limited et al [2018] EWHC 35 (IPEC)

This case, heard by His Honour Judge Hacon, relates to a trade mark infringement action brought in the IPEC on 26 October 2015 by Burgerista Operations GmbH (“the Claimant”) against six defendants, and a counterclaim for invalidity of the Claimant’s European Union Trade Mark for BURGERISTA.

The Claimant obtained a judgment in default against four of the defendants with only UK Prosper Limited and its director, Mr Khetriyan, seeking to defend the claim (“the Defendants”).

Background

The Claimant runs a restaurant business, with nine restaurants in Austria and nine in Germany. It has used the name BURGERISTA in relation to its restaurants since October 2014. The Claimant’s European Union Trade Mark for the mark BURGERISTA relied upon in these proceedings also dates back to October 2014. It is registered in relation to inter alia “Provision of food and drink; Restaurants, Canteens and Bars” in class 43.

The claim at issue was brought by the Claimant in connection with the use by the Defendants of the signs BURGISTA (word) , BURGISTA BROS (word) and stylised versions of these words , in relation to restaurants in London, operated under a franchise agreement with a Hong Kong company, Burgista Bros Ltd.

The grounds relied upon by the Claimant were (1) likelihood of confusion with its BURGERISTA trade mark and (2) unfair advantage/detriment to the distinctive character /repute of its mark.

Validity of the Claimant’s mark relied upon

The Defendants counterclaimed that the Claimant’s EUTM relied upon should be declared invalid because it is descriptive. The Defendants argued that the average consumer would understand BURGERISTA to mean a person who made burgers, or a person who served them, or a person who was a burger enthusiast. The Court did not find the evidence produced by the Defendants (i.e. two extracts from Oxford English Dictionary and Oxford Advanced Learner’s Dictionary showing three alternative definitions of the suffix “–ista” dating from 2017) to be sufficient to show that the average consumer would perceive the BURGERISTA mark as descriptive at the time the application for this mark was filed, that is in October 2014. Whilst the average consumer at that date may have understood the meaning assigned to the word BURGERISTA by the Defendants, if this meaning was explained to him/her, the Court’s view was that this was insufficient to satisfy the requirement of “immediate perception”.

Infringement – likelihood of confusion

The Court found the signs BURGISTA and BURGISTA BROS (word and stylised) to be similar to the Claimant’s BURGERISTA mark on visual and phonetic levels. On this basis, and in light of unchallenged evidence of confusion provided by the Claimant (which showed that (1) a Google search for BURGERISTA showed hits for the BURGISTA restaurants in London, and (2) that third party online references to the BURGISTA restaurants in London included BURGERISTA hashtags) the Court found there to be a likelihood of confusion between the BURGERISTA trade mark and the BURGISTA and BURGISTA BROS (word and stylised) signs, and thus use of all four signs by the Defendant infringed the Claimant’s trade mark. As a result, the Claimant was entitled to an injunction to restrain further use of the BURGISTA and BURGISTA BROS signs by the Defendants and to related relief (no damages or an account of profits were claimed).

Infringement – the sign is taking unfair advantage of or is detrimental to the distinctive character or repute of the trade mark

The Court considered the four requirements necessary in order to succeed under this ground and found that there was the necessary mental link between the Claimant’s trade mark and the Defendant’s sign on the basis that a likelihood of confusion between the trade mark and the sign had already been established. No argument of due cause was advanced by the Defendant. The court found that there would have been dilution of the Claimant’s trade mark, if it had proved the necessary reputation in its mark.

At the date of the Defendants’ first use of its marks, July 2015, the Claimant had six restaurants in Austria and one newly-opened restaurant in Germany; two of these were in Vienna, and the others in much smaller towns, but no evidence was produced by the Claimant to elevate any local reputation these restaurants may have enjoyed to reputation in the European Union at large within the meaning of the EU Trade Mark Regulation (e.g. there was no evidence that the restaurants had been presented to the public as part of a chain, or that the knowledge of the restaurants extended beyond their locality). Consequently, the court found that the Claimant’s had not established that they had a reputation in the BURGERISTA mark in July 2015 and, consequently, the dilution portion of the claim failed.

As an aside, the Claimant was not doing any business in the United Kingdom, but the Court was satisfied that it had a genuine intention to open restaurants in the London area and, in any event, it would have been possible for the Claimant to prove an EU-level reputation in its trade mark without any use at all in the UK..

Points to take away

This case shows the fine distinctions that the courts draw in assessing the validity, and scope of protection, of trade marks with descriptive or allusive characteristics and highlights the importance of producing persuasive evidence focused on the relevant dates. It also serves as a useful reminder that a genuine intention to trade in the United Kingdom, without any use or reputation in the UK, may suffice to support a Claimant’s dilution claim in an EU trade mark.