The Intellectual Property Enterprise Court (IPEC) recently handed down a decision in the case of Burgerista Operations GmbH v Burgista Bros Ltd and Ors  which provides useful insight into how the assessment of whether or not a trade mark is descriptive is carried out. The IPEC decision is notable for a number of reasons. Firstly, the judge found that the average consumer would not 'at that date', ie the application’s filing date of 1 October 2014, have perceived the word 'burgerista' as denoting a characteristic of restaurant services. Consequently, the word was not found to be descriptive of burger restaurants and could validly be registered as a trade mark, demonstrating the fine line between an allusive as opposed to a descriptive trade mark. Secondly, a likelihood of confusion and dilution was found, despite the fact that Burgerista Operations GmbH (the claimant) had no actual presence or reputation in the UK.
The claimant owned and operated a chain of burger restaurants in Germany and Austria, and owned the EU trade mark for the word 'BURGERISTA' in respect of class 43 (provision of food and drink; restaurants, canteens and bars). Through a franchise agreement with a Hong Kong based company, the fourth defendant operated four franchise restaurants in London trading under the name 'Burgista Bros'. The claimant brought a trade mark infringement claim and sought an injunction to restrain further use of the trade mark. The defendants counterclaimed, seeking a declaration that the trade mark was invalid on the ground that it was descriptive and therefore not registrable pursuant to articles 52(1) and 7(1)(c) of the Regulation (EC)207/2009 (as amended by Regulation (EU)20152534).
Article 7(1)(c) prevents the following from being registered as trade marks: 'trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service'.
The defendants argued that the trade mark was invalid because it was descriptive, ie it consisted exclusively of signs or indications which might serve to designate a characteristic of the goods and services in respect of which it was registered. The question therefore was whether the average consumer as at October 2014 would have immediately perceived (without thought or explanation) that the word 'burgerista' designated a characteristic of restaurant services.
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'. They argued that '-ista' meant one of three things, each of which would have rendered the trade mark descriptive:
The judge accepted the defendants’ contention that if the average consumer perceived the word 'burgerista' to have any of the meanings suggested by the defendants, article 7(1)(c) of the regulation would be satisfied.
The defendants sought to rely on definitions from Urban Dictionary and Reverso, which indicated a connection between 'burgerista' and fast food burger restaurants. However, the IPEC favoured the definitions in the Oxford English Dictionary and Oxford Advanced Learner’s Dictionaries, which connected the suffix '-ista' to a person associated with a particular activity, often in a derogatory way, such as 'fashionistas' being 'slaves to the latest trends'.
Consequently, the judge found that in October 2014 the average consumer would not have immediately perceived that ‘burgerista’ had any of the three alternative meanings proposed by the defendants. There was no evidence of commonplace use of the term and the claimant’s trade mark was validly registered.
Once the validity challenge fell away, the IPEC was tasked with determining whether the defendants’ conduct amounted to infringement of the trade mark. The defendants used four signs, two word signs (‘BURGISTA’ and ‘BURGISTA BROS’) and the two devices shown below.
For the conduct to amount to infringement, the IPEC had to be satisfied that the defendants’ use of its signs for restaurant services had given rise to a likelihood of confusion with the claimant’s enterprise. Although it was noted that the visual and aural similarities between 'burgerista' and 'burgista' were evident, the IPEC concluded that there was no conceptual similarity, because one included the word 'burger' and the other did not, meaning that only one could be considered to relate to the concept of burgers.
As the claimant had never traded in the UK, the judge considered that to date there had been no possibility of the two businesses being confused by consumers. However, that did not prevent him from concluding that there was a real possibility of confusion, based on the following evidence provided by the claimant:
The IPEC held that the similarity of look and sound, taken with the evidence provided by the claimant, established a likelihood of confusion. It is particularly noteworthy that this conclusion was reached notwithstanding the very strong likelihood that the individuals who used the trade mark had no knowledge of the claimant’s existence and therefore could not have confused the two enterprises. Nonetheless, the judge was prepared to make the finding on the basis that the claimant had a genuine intention to open restaurants in London in the foreseeable future, and there was accordingly a serious risk of confusion and dilution of the trade mark once it had done so.
This decision not only confirms that the potentially descriptive nature of the wording will be assessed as at the date the trade mark was applied for, but also demonstrates the power of an allusive trade mark. As regards the IPEC being prepared to find that there was a likelihood of confusion and therefore dilution, despite the fact the claimant had no presence or reputation in the UK, is an important reminder that an intention to do business in the UK can be sufficient.