Burgerista Operations GmbH v Burgista Bross Ltd & Ots* (Judge Hacon;  EWHC 35 (IPEC); 12.01.18)
Judge Hacon held that the mark BURGERISTA was not descriptive of people who made, served, or enjoyed burgers and was therefore validly registered. As use of the sign 'Burgista' by the defendants in the EU would infringe the BURGERISTA mark under Article 9(2)(b), Burgerista was entitled to an injunction. However, there was no threat of infringement under Article 9(2)(c) as the BURGERISTA mark had not acquired a reputation outside a small area of Austria.
Burgerista was a company in the burger restaurant business. It started in 2012 as a restaurant in Leonding, Austria trading under the name 'Burgers'. It expanded and in 2014 the trading name was changed to 'Burgerista'. At the date of trial, there were 18 restaurants in the chain, nine in Austria and nine in Germany. Burgerista owned an EUTM for BURGERISTA registered in respect of, among other things, "provision of food and drink; restaurants; canteens and bars" in Class 43.
The fourth defendant, UK Prosper Ltd ("UPL"), entered a franchise agreement with a Hong Kong company called Burgista Bros Ltd (the first defendant) in 2015 and opened a burger restaurant in London that year. It was the first restaurant in Europe to be franchised and the agreement stated that UPL had the exclusive right to use the 'Burgista Bros' name for up to 20 restaurants. By the time of trial, UPL had four franchised restaurants in London. Burgerista brought infringement proceedings, claiming infringement of its BURGERISTA mark under Article 9(2)(b) and (c) and seeking an injunction to restrain further use of the Burgista sign. The defendants counterclaimed for invalidity of the BURGERISTA mark pursuant to Articles 52(1)(a) and 7(1)(c).
Judge Hacon rejected the defendants' claim that the BURGERISTA mark was descriptive and therefore invalid. He found that at the date of registration of the mark in October 2014, the average consumer's understanding was a long way from an immediate perception, without thought or explanation, that 'burgerista' had any of the three alternative meanings proposed by the defendants, i.e. a person who made burgers, a person who served burgers, or a person who was very enthusiastic about burgers.
Infringement – Article 9(2)(b)
The Judge found that the BURGERISTA mark was infringed under Article 9(2)(b). He found no conceptual similarity between 'Burgerista' and 'Burgista' because the word 'burgerista' had some conceptual quality due to inclusion of the word 'burger' whereas 'burgista' did not. However, the features that the mark and sign had in common were not descriptive and confusion could therefore not be dismissed as irrelevant on that basis. The marks were visually and aurally similar and evidence adduced by Burerista that Google searches for 'burgerista' returned results for UPL's restaurants led the Judge to conclude that there was a likelihood of confusion. On that basis, each of the signs used by the defendants were found to infringe, namely: BURGISTA, BURGISTA BROS, and the following two device marks:
The Judge said that, had the BURGERISTA mark had a reputation in the EU, he would have found infringement under this head. However, when the defendants first started using the 'Burgista' sign in the EU, the BURGERISTA mark was far from being known throughout Austria and had not become known outside of Austria save possibly to a very limited extent. (It was known in Vienna, Linz, Salzburg and Pasching only.) Therefore, the test for reputation set out by the CJEU in Pago International GmbH (Case C-301/07) and in Iron Smith v Unilever (Case C-125/14) was not met and the claim for threatened infringement therefore failed under this head.