Case No. IP-2015-000175

26.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: 27.I discussed the law on art.9(2)(b) in Skyscape Cloud Services Ltd v Sky plc [2016] EWHC 1340 (IPEC); [2017] FSR 6, at [48]-[63] (in that case the Regulation was applied in its pre-amended state, so reference is to art.9(1)(b)), referring to recent judgments of the Court of Appeal.28.Of the six elements of art.9(2)(b) identified by the Court of Appeal in Comic Enterprises Ltd Twentieth Century Fox Film Corporation [2016] EWCA Civ 41; [2016] ETMR 22, at [28], the only one in issue by the time of the trial was the sixth: whether UPL’s use of its signs for restaurant services had given rise to a likelihood of confusion. I will begin with the word sign Burgista.29.The visual and aural similarities between ‘Burgerista’ and ‘Burgista’ are self-evident. They differ only in that two letters and one syllable removed from the middle of the trade mark will form the sign. Mr Jones submitted that there was conceptual identity because neither of the words meant anything. I don’t think this argument works. To my mind the word burgerista has some descriptive and therefore some conceptual quality because it includes within it the word burger, a dominant feature of the mark. Burgista does not. I have rejected the submission that the average consumer would give ‘-ista’ the meanings as a suffix for which the Defendants contended, at least when added to ‘burger’ or ‘burg’. In my view there is no conceptual similarity between the trade mark and the sign.30.Michael Werner, Chief Executive Officer of BG, gave unchallenged evidence regarding a likelihood of confusion. It was presented as evidence of what is sometimes called ‘wrong way round confusion’, in other words confusion which had led the trade mark proprietor’s business to be mistaken for the alleged infringer’s. In Comic Enterprises the Court of Appeal ruled that ‘wrong way round confusion’ was admissible as part of the court’s assessment of whether there is a likelihood of ‘right way round confusion’, at [75]-[84].31.In fact, Mr Werner’s evidence was not even of fully ‘wrong way round confusion’. This was inevitable because BG has not traded in the United Kingdom and so has no reputation in this country; UPL’s trading so far has only been in the UK. The local nature of a burger restaurant’s reputation means that to date there has been no possibility of the two businesses being confused by consumers, whether the right or the wrong way around, or of the two businesses being perceived to be economically linked.32.Mr Werner did a number of things. First, he googled ‘burgerista’. The second entry on the results page consisted of a map of London identifying three restaurants, with their contact details below, all of them UPL’s Burgista restaurants. Secondly, he exhibited a page from a website called ‘Ourvintage.Life’ headed ‘Burgista’. It was an entry about one of UPL’s restaurants. There was a hashtag at the bottom: #burgerista. Thirdly there was an Instagram page from a blog of someone called Dimitar Popov. This featured a picture of food in a Burgista restaurant with hashtags that included #burgerista, #london and #burgista. Finally there were copies of pages from a blog by people who style themselves ‘Londonistas’. It appears to be a guide to events and attractions in London. On 30 January 2017 two of them posted an item about UPL’s Burgista restaurant in Baker Street. It was headed ‘JANUARY: BURGERISTA’. The discussion included this (with original italics):“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…”33.Ms Chantrielle did not dispute that this was evidence of the names ‘Burgista’ and ‘Burgerista’ having been muddled. She submitted that there were three reasons why this did not help BG.34.First, BG had chosen a descriptive name so this type of muddle is inevitable and not relevant to a likelihood of confusion within the meaning of art.9(2)(b).35.Secondly, Ms Chantrielle relied on what Jacob LJ had said in Reed Executive plc v Reed Business Information [2004] EWCA Civ 159; [2004] RPC 40:“[83] 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; …’[84] 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.[85] 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.”36.The third argument was that the likelihood of confusion had to be considered in the context of UPL’s use of its Burgista sign.37.Mr Werner’s evidence supports BG’s case that if it and UPL were to trade in the same locality respectively under their Trade Mark and sign, i.e. in the context that would matter, a significant proportion of relevant persons and thus the average consumer would be likely to confuse the two names.38.I have accepted that the Trade Mark has some descriptive quality, but I don’t think that Reed helps the Defendants. In argument Ms Chantrielle said that the effect of Jacob LJ’s judgment was that the scope of protection of a descriptive mark is narrow. That is true in a sense, but there is a danger of treating Office Cleaning and Reed as if they have established a rule of policy: owners of descriptive trade marks (not descriptive enough to be invalid) just have to put up with signs having only small differences and must live with a bit of confusion; the court must give a defendant an unidentified amount of leeway in an action to enforce such marks.39.I do not believe that this is what Lord Simonds had in mind in Office Cleaning or what Jacob LJ meant in Reed. Jacob LJ’s paragraph 85 points out that in the real world the public will tend to focus on the non-descriptive parts of a mark and sign and use those parts to distinguish one trader from another. Those parts should therefore be accorded significance when assessing the likelihood of confusion.40.I would take this a little further. The court will be careful to discount confusion which, notwithstanding Jacob LJ’s observation, has arisen solely because of the purely descriptive elements common to both the claimant’s and defendant’s marks – for instance, where some people have muddled the identity of two companies just because they both have ‘office cleaning’ in their names. This is not a matter of policy; it is simply that such confusion is irrelevant to the claimant’s case. I discussed this in the context of passing off in Cranford Community College v Cranford College Limited [2014] EWHC 2999 (IPEC); [2015] ETMR 7, at [15]-[19].41.I have taken the view that the features in common between the Trade Mark and the sign ‘Burgista’ are not descriptive. Therefore confusion cannot be dismissed as irrelevant because it was caused solely by a descriptive element common to both Trade Mark and sign. Office Cleaning and Reed have no application. Any confusion can be attributed to the Trade Mark and sign looking and sounding alike.42.In my judgment, that similarity of look and sound taken with the evidence provided by Mr Werner establish that there is a likelihood of confusion between the Trade Mark and the sign. UPL has infringed the Trade Mark by use of the that sign, pursuant to art.9(2)(b).43.The next question is whether BURGISTA BROS and the device signs also infringe. In my view they do. ‘Burgista’ is by far the dominant and distinctive element of all three signs. Use of those signs infringe for the reasons given above in relation to Burgista.