INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
| BURGERISTA OPERATIONS GmbH
|- and -
|BURGISTA BROS LIMITED
BURGISTA BROTHERS LIMITED
UK PROSPER LIMITED
HAMID REZA MOGHIMI
Ashton Chantrielle (instructed by Collyer Bristow LLP) for the Fourth and Sixth Defendants
Hearing date: 15 November 2017
Crown Copyright ©
Judge Hacon :
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."
(in nouns) a person who is very enthusiastic about something
• fashionistas who are slaves to the latest trends"
"a person who works at a fast-food burger restaurant"
"like a barista (bar tender) for a fast-food burger restaurant"
Infringement – art.9(2)(b)
"We started the year off with a new burger joint we discovered in Baker Street: Burgerista…and well, we're the Londonistas so it seemed like the perfect place to start off this year's burgers.
Overall…a thumbs up for Burgerista! And it's literally round the corner from Baker St station…"
" Finally, although I agree with the judge's questioning of the Court's proposition of fact that 'there is a greater likelihood of confusion with very distinctive marks' there is some truth with the opposite proposition. The Court in Lloyd said:
'23. In determining the distinctive character of a mark, and accordingly in assessing whether it is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings.
24. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; …'
 The last sentence is an acknowledgement of a fact that has long been recognised: where a mark is largely descriptive 'small differences may suffice' to avoid confusion (per Lord Simonds in Office Cleaning Services v Westminster Window and General Cleaning (1946) 63 R.P.C. 30 at p.43). This is not a proposition of law but one of fact and is inherent in the nature of the public perception of trade marks.
 It is worth examining why that factual proposition is so – it is because where you have something largely descriptive the average consumer will recognise that to be so, expect others to use similar descriptive marks and thus be alert for detail which would differentiate one provider from another. Thus in the cited case 'Office Cleaning Association' was sufficiently different from 'Office Cleaning Services' to avoid passing off."
Infringement – art.9(2)(c)
(1) the trade mark is identical or similar to the sign;
(2) the trade mark enjoys a reputation in a substantial part of the EU;
(3) the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark;
(4) such use is without due cause.
The matters left in issue
The relevant date
" The Court has thus pointed out that, in order to ensure the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish that product or service from others which have another origin, the proprietor must be protected against competitors wishing to take unfair advantage of the status and reputation of the trade mark by selling products illegally bearing that mark (see Case C-349/95 Loendersloot  E.C.R. I-6227, at , and Case C-206/01 Arsenal Football Club  ECR I-10273, at ). That must also be the case where, on the basis of a similarity between the signs and the mark in question, there is a likelihood of confusion between them.
 Member States must take measures which are sufficiently effective to achieve the aim of the directive and they must ensure that the rights conferred by it can be effectively relied upon before the national courts by the persons concerned (see Case 14/83 Von Colson and Kamann  ECR 1891 at , and Case 222/84 Johnston  ECR 1651 at ).
 The proprietor's right to protection of his mark from infringement is neither genuine nor effective if account may not be taken of the perception of the public concerned at the time when the sign, the use of which infringes the mark in question, began to be used.
 If the likelihood of confusion were assessed at a time after the sign in question began to be used, the user of that sign might take undue advantage of his own unlawful behaviour by alleging that the product had become less renowned, a matter for which he himself was responsible or to which he himself contributed.
 Article 12(2)(a) of Directive 89/104 provides that a trade mark is liable to revocation if, after the date on which it was registered, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service in respect of which it is registered. Thus, by balancing the interests of the proprietor against those of his competitors in the availability of signs, the legislator considered, in adopting this provision, that the loss of that mark's distinctive character can be relied on against the proprietor thereof only where that loss is due to his action or inaction. Therefore, as long as this is not the case, and particularly when the loss of the distinctive character is linked to the activity of a third party using a sign which infringes the mark, the proprietor must continue to enjoy protection.
 In the light of all the foregoing, the answer to the first and second questions must be that Art.5(1) of Directive 89/104 must be interpreted as meaning that, in order to determine the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, the national court must take into account the perception of the public concerned at the time when the sign, the use of which infringes that trade mark, began to be used."
The extent of the reputation required
"… it is possible to conclude in my view that, although the concept of a well-known mark is itself not clearly defined, a mark with a 'reputation' need not be as well known as a well-known mark."
" In that connection, as regards art.9(1)(c) of Regulation 40/94, the Court held that the concept of 'reputation' assumes a certain degree of knowledge amongst the relevant public, which must be considered to be reached when the Community trade mark is known by a significant part of the public concerned by the products or services covered by that trade mark (see judgment in PAGO International (C-301/07) EU:C:2009:611 at  and ).
 In examining this condition, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it (judgment in PAGO International (C-301/07) EU:C:2009:611 at ).
 Territorially, the condition as to reputation must be considered to be fulfilled when the Community trade mark has a reputation in a substantial part of the territory of the Community and such a part may, in some circumstances, correspond to the territory of a single Member State (see, to that effect, PAGO International (C-301/07) EU:C:2009:611 at  and ).
 Thus, if the reputation of an earlier Community trade mark is established in a substantial part of the territory of the EU which may, in some circumstances, coincide with the territory of a single Member State, it must be held that that mark has a 'reputation in the [EU]', within the meaning of art.4(3) of Directive 2008/95 , and the proprietor of that mark is not required to produce evidence of that reputation in the Member State in which the application for registration of the later national mark, which is the subject of an opposition, has been filed.
 Having regard to all the foregoing considerations, the answer to the first three questions is that art.4(3) of Directive 2008/95 must be interpreted as meaning that, if the reputation of an earlier Community mark is established in a substantial part of the territory of the EU, which may, in some circumstances, coincide with the territory of a single Member State, … it must be held that that mark has a reputation in the EU."
" Indeed, in the final analysis, the question of reputation depends on the relevant market for the goods and services under consideration. The answer to the question of what constitutes a substantial part of the EU requires, therefore, a circumstantial analysis that only the national court dealing with the case can undertake. As the Court has noted, the market share held by the earlier trade mark, the intensity, geographical extent and duration of its use as well as the size of the investment made by the undertaking in promoting the mark are all factors to be taken into account in that analysis. In other words, reputation constitutes a knowledge threshold requirement, which must be assessed on the basis of quantitative criteria. To determine whether a specific trade mark has a reputation in a substantial part of the EU thus requires a combination of geographical and economic criteria. The significance of the relevant market for given goods or services therefore ought to assume a paramount role in the analysis.
 More specifically, as can be inferred from Pago International, the question of what constitutes a substantial part of the EU is necessarily – and this is a point that cannot be over-emphasised – dependent on the specific mark which is described as enjoying a reputation and accordingly, the public concerned. Given that it is proportion rather than absolute numbers that matters in this context, the fact that the relevant market may be of a limited overall size does not, as such, prevent a mark from acquiring reputation. While in my view the territory of a Member State (large or small alike) may indeed, as the case may be, constitute a substantial part of the EU, the analysis leading to that conclusion must nevertheless be conducted without consideration of geographical borders."
(1) An EU trade mark has a reputation within the meaning of art.9(2)(c) if it was known to a significant part of the relevant public at the relevant date.
(2) The relevant public are those concerned by the products or services covered by the trade mark.
(3) The relevant date is the date on which the defendant first started to use the accused sign.
(4) From a geographical perspective, the trade mark must have been known in a substantial part of the EU at the relevant date.
(5) There is no fixed percentage threshold which can be used to assess what constitutes a significant part of the public; it is proportion rather than absolute numbers that matters.
(6) Reputation constitutes a knowledge threshold, to be assessed according to a combination of geographical and economic criteria.
(7) All relevant facts are to be taken into consideration when making the assessment, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by undertaking in promoting it.
(8) The market for the goods or services in question, and from this the identity of the relevant public, ought to assume a paramount role in the assessment.
(9) The territory of a single Member State (large or small) may constitute a substantial part of the EU, but the assessment must be conducted without consideration of geographical borders.
" As the present case concerns a Community trade mark with a reputation throughout the territory of a Member State, namely Austria, the view may be taken, regard being had to the circumstances of the main proceedings, that the territorial requirement imposed by Article 9(1)(c) of the regulation is satisfied."
"This is where the real marketing investment is – in the restaurants themselves, which are designed and built to reflect the Burgerista restaurant brand."
"…the real drivers behind this smaller, emerging market: namely a focus on product quality, overall experience and a 'local' and more intimate feeling."
"2. If the earlier Community trade mark has already acquired a reputation in a substantial part of the territory of the EU, but not with the relevant public in the Member State in which registration of the later national mark concerned by the opposition has been applied for, the proprietor of the Community trade mark may benefit from the protection introduced by art.4(3) of Directive 2008/95 where it is shown that a commercially significant part of that public is familiar with that mark, makes a connection between it and the later national mark, and that there is, taking account of all the relevant factors in the case, either actual and present injury to its mark, for the purposes of that provision or, failing that, a serious risk that such injury may occur in the future."
" … whereas the relevant public of the Member State in which the later trade mark has been applied for is not decisive in determining whether the earlier Community trade mark enjoys a reputation in the EU for the purposes of art.4(3) of the Directive, that public is – conversely – of paramount importance in determining whether the later national trade mark would take unfair advantage of, or be detrimental to, the earlier Community trade mark with a reputation. It must be borne in mind that the protection afforded to a national trade mark is circumscribed, as a matter of principle, by the territory of the Member State in which the mark is applied for. That is why, when dealing with grounds of refusal as regards national trade marks, it stands to reason that the relevant public for the purposes of determining the existence of detriment or unfair advantage must be that in that Member State."