The Claimant in this UK case before the IPEC was Burgerista Operations GmbH (“BG”), the owner of an EU registered trade mark BURGERISTA.
The Defendants were Burgista Bros Limited and UK Prosper Limited (and others) (“UPL”) who used the mark BURGISTA.
BG started a burger company in Austria in September 2012, initially called BURGER but upon expansion, the name was changed in October 2014 to BURGERISTA. BG have an EU registered trade mark for BURGERISTA covering, amongst other things “Provision of food and drink; Restaurants, Canteens and Bars” in class 43.
UPL entered the burger restaurant business in September 2015 with the first London based branch of BURGISTA having entered into a franchise agreement with a Hong Kong company called Burgista Bros Ltd. This was the first European franchise restaurant.
BG sought an injunction preventing the use of BURGISTA alleging infringement of their registered trade mark. UPL counterclaimed seeking a declaration that the trade mark was invalid as it was descriptive.
Is BURGERISTA descriptive for burgers?
The Court held it was not. It found that the English speaking public were not as familiar with baristas and fashionistas in October 2014 (when the EU trade mark was applied for) as they are today and that whilst the average consumer would accept an explanation that a BURGERISTA is someone who is very enthusiastic about burgers, there was no evidence that this was commonly known.
Did the use of BURGISTA cause confusion with the trade mark for BURGERISTA?
The Court held that the marks are visually and aurally similar but rejected that the marks had any conceptual similarity to each other as BURGER has a meaning but BURG does not. The Court held that there was a likelihood of confusion and that UPL had infringed the trade mark.
BG argued that there was confusion already in the UK. BG carried out internet searches and was able to show the Court several blogs and social media postings where BURGERISTA had been used instead of BURGISTA. UPL argued that confusion has taken place because BURGERISTA is purely descriptive and as such the owners have to accept that others will use similar descriptive marks.
The Court accepted that the trade mark did have some descriptive quality but not enough to be invalid. The Court cautioned against enforcing a policy in which trade mark owners of descriptive marks (but not descriptive enough to be invalid) would have to put up with other signs having only a small difference and accept some confusion.
The Claimant argued its mark had a reputation and the use of BURGISTA takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
The Court had found that the trade marks were similar and also reiterated that it was not necessary for the Claimant to prove actual and present injury but merely proof that there is a serious risk that such injury will occur in the future.
BG had to provide evidence that their trade mark enjoyed a reputation in a substantial part of the EU. It has 9 restaurants in Austria where it began and another 9 in Germany. The population of Austria where the trade mark did have a reputation is about 8.7 million, in comparison with the population of the EU overall which is about 512 million. The Court held that this did qualify for the status of having a reputation in the EU. It did point out that the reputation had to be throughout Austria and reputation in just parts of the country would not have been acceptable.
There was much discussion in the decision regarding the amount of money spent by BG on marketing and advertising during 2014 and whether UPL had gained an unfair advantage by using a confusingly similar restaurant name. UPL argued that their restaurant was only in the UK and BG were only in Austria and Germany and so there was no dilution of the trade mark. BG were not able to show any downturn in business as a result of BURGISTA opening in London, which UPL argued was because they did not have a reputation in the UK.
The Court held, however, that if they were satisfied that BG had any intentions to open a restaurant in the UK in the foreseeable future, this would lead to a serious risk of dilution of the trade mark and this would cause injury (because there would then be a relevant reputation to be injured). BG stated that they intended to start franchising within the EU which was accepted by the Courts.
The Court held that there was a threat of infringement and that BG was entitled to an injunction and to related relief.
Case Ref: IPEC EWHC 35