Burgerista Operations GmbH v (1) Burgista Bros Ltd
| Jurisdiction | England & Wales |
| Judge | Hacon |
| Judgment Date | 12 January 2018 |
| Neutral Citation | [2018] EWHC 35 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | Case No: IP-2015-000175 |
| Date | 12 January 2018 |
[2018] EWHC 35 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
HIS HONOUR JUDGE Hacon
Case No: IP-2015-000175
Thomas Jones (instructed by Fieldfisher LLP) for the Claimant
Ashton Chantrielle (instructed by Collyer Bristow LLP) for the Fourth and Sixth Defendants
Hearing date: 15 November 2017
Introduction
The Claimant (“BG”) is a company in the burger restaurant business. It started in September 2012 as a restaurant run by the brothers Alexander and Oliver Platzl in Leonding, Austria. At that time the business traded under the name ‘Burgers’. It expanded and in October 2014 the trading name was changed to ‘Burgerista’. There are now eighteen restaurants in the chain, nine in Austria and nine in Germany.
BG is the proprietor of EU Trade Mark No. 013318209 for the word BURGERISTA (“the Trade Mark”) registered as of 1 October 2014 for, among other things, “Provision of food and drink; Restaurants, Canteens and Bars” in Class 43.
The fourth defendant (“UPL”) entered the burger restaurant business in September 2015 by opening its first branch in Shepherd's Bush. On 6 April 2015 UPL had entered into a franchise agreement with a Hong Kong company called Burgista Bros Ltd. UPL's restaurant was the first in Europe to be franchised. The agreement stated that UPL had the exclusive right to use the ‘Burgista Bros’ name for up to 20 restaurants, each of which would be allotted a territory surrounding the restaurant in which UPL would have the exclusive right to use the sign ‘Burgista’. By the time of the trial UPL had four franchised restaurants in London, including a branch in Piccadilly.
On 26 October 2015 BG started this action alleging infringement of the Trade Mark.
BG obtained a judgment in default against the First to Third and Fifth Defendants, which and who have played no further part in the proceedings. The Sixth Defendant (“Mr Khetriyan”) is the sole director and shareholder of UPL. Hereafter “the Defendants” will mean only the Fourth and Sixth Defendants. It was admitted by the Defendants that if UPL is liable for infringement of the Trade Mark, Mr Khetriyan is liable as a joint tortfeasor.
BG relied on art.9(2)(b) and (c) of Regulation (EC) 207/2009 as amended by Regulation (EU) 2015/2524 (“the Regulation”). It does not ask for damages or an account of profits, but seeks an injunction to restrain further use of the Burgista sign and related relief.
The Defendants have counterclaimed for a declaration that the Trade Mark is invalid pursuant to arts.52(1)(a) and 7(1)(c) of the Regulation.
Validity
The Defendants argued that the Trade Mark is descriptive: that it consists exclusively of signs or indications which may serve, in trade, to designate a characteristic of the goods and services in respect of which it is registered.
It was common ground that this was to be tested by reference to the understanding of the average consumer. In the present case this was an English-speaking person who may be interested in eating at a burger restaurant.
Attention was paid only to the services referred to above. It was agreed that in the event that I were to find that the mark is descriptive in relation to these, the parties would make further submissions as to whether and how the registration could be amended to become valid.
Descriptiveness falls to be assessed as of the date of filing of the application, here 1 October 2014, see Alcon Inc v OHIM C-192/03, EU:C:2004:587. The question was whether the average consumer would at that date have immediately perceived, without thought or explanation, that the word ‘burgerista’ designated a characteristic of restaurant services, see JW Spear & Sons Ltd v Zynga Inc [2015] EWCA Civ 290; [2015] FSR 19, at [73]–[83].
The Defendants' case was that the average consumer would have recognised burgerista to be composed of two parts: the word ‘burger’ and the suffix ‘-ista’. The meaning of ‘-ista’ required some discussion and evidence. Ms Chantrielle said that it had three alternative meanings in English: either a maker of, a server of, or an enthusiast about, the thing to which it is a suffix. The main examples used were ‘barista’: a maker and/or server of coffee, and ‘fashionista’: an enthusiast about fashion. There were other examples of the use of -ista as a suffix, including one which emerged as part of BG's evidence of confusion, discussed below. It was not in dispute that at least ‘barista’ and ‘fashionista’ have entered common usage.
The Defendants' argument was that burgerista was a word taken by the average consumer to mean a person who made burgers, alternatively a person who served them or a person who was very enthusiastic about burgers.
To establish their case under art.7(1)(c), the Defendants did not have to show that burgerista designated any of the goods or services in the Trade Mark specification exactly. Designation of a characteristic will do and this includes ancillary characteristics. What this can mean was demonstrated by the CJEU in Case C-363/99, Koninklijke KPN Nederland NV v Benelux Merkenbureau [2004] ECR I-1619; [2005] 3 WLR 649. A characteristic of a post office is that it sells items such as stamps; therefore POST OFFICE may not be registered for postage stamps or other goods characteristically sold in a post office, see the judgment at [54]–[57] and [102].
I accept Ms Chantrielle's contention that if the average consumer perceived the word burgerista has any of the meanings suggested by the Defendants, art.7(1)(c) of the Regulation would be satisfied.
Ms Chantrielle referred me to four online publications. The first was the online OED, which makes no mention of ‘burgerista’ but does define ‘-ista’:
“-ista, SUFFIX
Informal. Forming nouns denoting a person associated with a particular activity, often with a derogatory force. ‘ fashionista’.
Origin: From the Spanish ending -ista, as in Sandinista.”
The second came from Oxford Advanced Learner's Dictionaries (“OALD”), published by Oxford University Press:
“-ista suffix
(in nouns) a person who is very enthusiastic about something
• fashionistas who are slaves to the latest trends”
The third and fourth publications, taken from the web, had definitions of ‘burgerista’ itself. One was the Urban Dictionary:
“a person who works at a fast-food burger restaurant”
The other definition of ‘burgerista’ came from Reverso, an online translation tool:
“like a barista (bar tender) for a fast-food burger restaurant”
Neither the Urban Dictionary nor Reverso seems to me to be of any help. There was no evidence as to how they are compiled. Both counsel thought that anyone could post any definition they liked on either website. The definitions I was shown seem to have come from a single person in each case. The one in the Urban Dictionary was provided by ‘ShadeyHillRanch’ on 21 June 2014 and that in Reverso by ‘agrigutz’ six days later, on 27 June 2014. Assuming that agrigutz was not the person earlier posing as ShadeyHillRanch, these are two views, but both could be idiosyncratic. ShadeyHillRanch and agrigutz may live outside the EU. Neither's view can be taken as a reliable guide to what the English-speaking average consumer in the EU understood.
On the other hand, I believe I am entitled to take judicial notice of the likelihood that the online OED is compiled with greater care and is thus more likely to reflect the contemporary understanding of the average consumer. I will assume that the same is true of the OALD. However, the print-out of the OED was dated 14 November 2017. The sheet I was given showing the page from the OALD had no date but I imagine it was taken from the web at about the same time. Neither was evidence of the definition of ‘-ista’ in October 2014.
The question whether a trade mark is descriptive is not binary. There is a continuous spectrum from totally non-descriptive signs to entirely descriptive ones. Jacob LJ on occasion used NORTH POLE for bananas to illustrate one end of the spectrum, with SOAP for soap at the other end. BURGERISTA for restaurant services falls somewhere between.
It may be that a handful of people in the EU used it by October 2014 in one or more of the ways suggested by the Defendants. By that date the common use of barista and the use of fashionista, possibly less common, could have conferred on ‘-ista’ the status of a suffix in the minds of some other English-speaking consumers.
I think that in October 2014, if it had been explained to the average consumer that a burgerista is someone who makes, serves, or is very enthusiastic about burgers, this may have made some sense to him or her. I would put the position no higher. There was no evidence of commonplace use of the term. The Defendants' case on the meaning that would have been given to the word burgerista is weakened somewhat by the offer of three alternatives. And even as of November 2017 the online OED and OALD did not share exactly the same idea of what the suffix ‘-ista’ means.
In my view, 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. BG's mark was validly registered.
Infringement – art.9(2)(b)
The allegation of infringement was raised against all four signs used by UPL. Two were word signs: BURGISTA and BURGISTA BROS. The other two were devices:
I discussed the law on art.9(2)(b) in Skyscape Cloud Services Ltd v Sky plc [2016]...
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