Burgerista Operations GmbH v Burgista Bros Ltd & Ors

For infringement under art.9(2)(b), confusion caused by similarities in non-descriptive elements remains relevant even where a mark has some descriptive quality. There is no general policy granting defendants leeway to use signs differing only slightly from a valid descriptive mark.

For art.9(2)(c), reputation is assessed when the defendant first uses the sign. It requires knowledge among a significant part of the relevant public in a substantial part of the European Union. The assessment is fact-sensitive and considers geographical and economic criteria. A serious future risk of injury may establish dilution where the proprietor has a genuine intention to enter the defendant’s market.

The claimant owned an EU trade mark for BURGERISTA covering restaurant and related services. The defendants operated London burger restaurants using BURGISTA, BURGISTA BROS and related device signs.

The claimant alleged infringement under arts.9(2)(b) and 9(2)(c) of Regulation (EC) 207/2009, as amended. The defendants counterclaimed that the mark was invalid because it was descriptive under art.7(1)(c). The central issues were the mark’s validity, likelihood of confusion, reputation in the European Union, and dilution.

1. Validity. Descriptiveness was assessed at the filing date by reference to the English-speaking average consumer. The question was whether the consumer would immediately perceive, without thought or explanation, that BURGERISTA designated a characteristic of restaurant services. The evidence showed, at most, that the word might make sense after explanation. The mark was therefore validly registered.
2. Article 9(2)(b). The visual and aural similarity between BURGERISTA and BURGISTA, together with evidence of actual muddling of the names, established a likelihood of confusion if the businesses traded in the same locality. The fact that the mark had some descriptive quality did not make that confusion irrelevant. The common features were not descriptive, and the reasoning in Reed Executive plc v Reed Business Information and Office Cleaning Services v Westminster Window and General Cleaning did not establish a general policy of allowing similar signs. BURGISTA BROS and the device signs also infringed because BURGISTA was their dominant and distinctive element.
3. Article 9(2)(c). A link between mark and sign is necessary but insufficient. Reputation had to be assessed when the defendants first used the sign, in July 2015. The claimant’s local Austrian and German restaurant reputation did not amount to reputation in the Union within the statutory meaning. Accordingly, the art.9(2)(c) claim failed.
4. The court nevertheless held that, had the requisite reputation existed, the claimant’s genuine intention to open restaurants in London, combined with the demonstrated likelihood of confusion, would have established a serious future risk of dilution. Proof of an actual change in consumer economic behaviour was not necessary on these facts.
5. The mark was valid. The defendants threatened infringement under art.9(2)(b). An injunction and related relief were granted against both defendants. The art.9(2)(c) claim was not established.