Burger battle considered by UK Intellectual Property Enterprise Court

Burgerista Operations GmbH v Burgista Bros Ltd and others [2018] EWHC 35 (IPEC), [2018]

Facts:
The Claimant company (BG) was in the business of operating burger restaurants.

It owned eighteen restaurants in Germany and Austria, under the name Burgerista. It owned European Union Trade Mark 013318209 for the word 'Burgerista'.

In April 2015, the fourth Defendant (UPL) entered into a franchising agreement with a Hong Kong company called Burgista Bros Ltd.

In September, it opened a burger restaurant in London.

In October, BG commenced proceedings, alleging infringement of its trade mark. It obtained judgment in default against the first to third and fifth defendants, and only the action against UPL and the sixth defendant (together, the defendants), remained.

Issues:

1. Whether the mark in question was valid
2. If so, has UPL infringed such mark

Decision:

The Defendants contended that the mark was descriptive, in that it consisted exclusively of signs or indications that served, in trade, to designate a characteristic of the goods and service in respect of which it was registered.

It was common ground that that was to be tested in respect of the average consumer, namely an English-speaking person who might have been interested in eating at a burger restaurant.

The Defendants put forward three alternative meanings for 'burgerista', namely that it denoted a person who made, served or was very enthusiastic about, burgers.

On the evidence, had it been explained to the average consumer in October 2014 that a 'burgerista' was a person who made, served or was very enthusiastic about, burgers, that might have made some sense to him.

In October 2014, the average consumer's understanding had been a long way from an immediate perception, without thought or explanation, that 'burgerista' had any of the three meanings proposed by the defendants.

The mark had been validly registered.

In respect of infringement, two were word signs, namely 'Burgista' and 'Burgista Bros'.

The other two were devices (logos).

The issue was whether the signs for Burgista's restaurant services had given rise to a likelihood of confusion.

The similarity of look and sound taken with the evidence, established that there was a likelihood of confusion between the trade mark and the word sign 'Burgista'.

UPL had infringed the trade mark by use of that sign.

The word sign 'Burgista Bros' and the device signs also infringed, for the same reasons as the word sign 'Burgista'. 'Burgista' was by far the dominant and distinctive element of all three signs.

BG was entitled to an injunction against the defendants and to related relief.