In a recent case the Intellectual Property and Enterprise Court decided that the trade mark BURGERISTA had been infringed by the use of the sign 'Burgista'.
The similarity of look and sound, taken with the evidence produced to the court, established there was a likelihood of confusion under Article 9(2)(b) of the EU Trade Mark Regulation.
In considering the infringement and counterclaim for invalidity, Hacon J provides some interesting thoughts on what an average consumer might understand by the suffix '-ista' and which dictionaries might provide a reliable guide.
The claimant, who runs eighteen burger restaurants in Austria and Germany, registered the word BURGERISTA ("the Trade Mark") in October 2014 for (among other things) 'provision of food and drink; restaurants; canteens and bars' in Class 43.
The defendants entered into a franchise agreement with a company in Hong Kong called Burgista Bros Ltd in April 2015, granting them the exclusive right to use the 'Burgista Bros' name for up to 20 restaurants. The defendants opened their first burger restaurant in London in September 2015, with other branches following shortly after that.
The claimant brought an action alleging infringement of the Trade Mark, seeking an injunction to restrain further use of the Burgista sign. The defendants counterclaimed for a declaration that the Trade Mark was invalid pursuant to Article 52 (1) (a) and 7(1) (c) of the EU Trade Mark Regulation ("the Regulation").
The defendants argued that the Trade Mark was descriptive, consisting exclusively of signs or indications which designate a characteristic of the goods and services for which it is registered. Hacon J clarified that descriptiveness had to be assessed at the date of filing, that is, October 2014. The question was therefore whether the average consumer would, at that time, immediately have understood that the word 'burgerista' designated a characteristic of restaurant services.
The defendants contended that the average consumer would consider the word to be composed of two parts: 'burger' and the suffix '-ista'. Three alternative meanings were put forward for '-ista': either a maker of, or server of, or an enthusiast about the thing to which it is a suffix. Four online publications were also referred to by the defendant, defining either 'ista' or 'burgerista'.
Hacon J concluded that two of the online publications (the Urban Dictionary and Reverso) were of no help, since anyone could post any definition. They were therefore not a reliable guide to what the English-speaking average consumer in the EU understood. The online OED and the Oxford Advanced Learner's Dictionaries were compiled with greater care. However, they reflected the position in 2017; neither was evidence of the definition of '-ista' in October 2014.
In Hacon J's view, the average consumer's understanding was a long way from an immediate perception that burgerista had any of the three alternative meanings proposed by the defendants. The Trade Mark was therefore validly registered.
Unchallenged evidence of 'wrong way round confusion' was provided to the court, that is, confusion which had led the trade mark proprietor's business to be mistaken for the alleged infringer's. A Google search showed that several websites had muddled the two marks. The defendants contended that this was not relevant to the likelihood of confusion within the meaning of Article 9(2)(b). However, Hacon J considered that the evidence did support the claimant's case that if the parties were to trade in the same locality under their respective mark and sign (that is, in a context that would matter), the average consumer would be likely to confuse the two names.
The defendants' second contention was that where a mark is largely descriptive 'small differences may suffice' to avoid confusion. Hacon J referred to previous case law pointing out that, in the real world, the public tend to focus on the non-descriptive parts of a mark and sign and use those parts to distinguish one trader from another. The judge took this further and stated that the court will be careful to discount confusion which has arisen solely because of the purely descriptive elements common to both marks.
In this case, Hacon J took the view that the features in common between the Trade Mark and the sign 'Burgista' were not descriptive. Therefore confusion could not be dismissed as irrelevant. Instead, the judge attributed any confusion to the Trade Mark and sign looking and sounding alike. Taken with the evidence provided, a likelihood of confusion was established and the judge concluded that the defendants had infringed the Trade Mark pursuant to Article 9(2)(b).
Having found infringement of Article 9(2)(b), the judge went on to consider infringement under Article 9(2)(c), analysing the extent of the reputation of the Trade Mark on the date on which the defendants first started to trade under the Burgista sign. He concluded that the Trade Mark did not have a reputation in the European Union within the meaning of Article 9(2)(c) and so the infringement claim on that ground failed.
This case acts as a useful reminder that, in respect of a claim relating to validity of a trade mark, descriptiveness must be assessed at the date of filing. It can be an interesting challenge to test the understanding of an average consumer at that date, as the English language continues to evolve, as evidenced by new dictionary entries.
The decision also provides helpful guidance relating to confusion between marks which contain aspects that could be considered descriptive. Hacon J asserts that the court will ensure that it discounts confusion which has arisen solely because of the purely descriptive elements common to two different marks. He states that this is not a matter of policy, but it is simply that such confusion would be irrelevant to a claimant's case.
Burgerista Operations GmbH v Burgist Bros Ltd and others  EWHC 35 (IPEC), 12 January 2018.