Burgerista Operations v Burgista Bros: Trade Mark Infringement
22 January 2018
Is the trade mark "BURGERISTA" for restaurant, canteen and bar services valid and infringed by the sign "BURGISTA" for the same services? The Intellectual Property Enterprise Court (IPEC) has held that it is.
In doing so, it rejected submissions that the trade mark, registered in 2014, was descriptive (it was argued that "... ISTA" used as a suffix denotes, inter alia, enthusiasm for that which preceded it, similar to barista or fashionista).
It also found the evidence of confusion persuasive. Here the CEO of Burgerista Operations, Mr Werner, demonstrated the following:
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 [the defendant’s] Burgista restaurants. Secondly, he exhibited a page from a website called 'Ourvintage.Life' headed 'Burgista'. It was an entry about one of [the defendant’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' ... On 30 January 2017 two of them posted an item about [the defendant’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!
As to unfair advantage or detriment, the court held that the claimant did not have a sufficient reputation to substantiate the cause of action.
Case details at a glance
Jurisdiction: England & Wales
Decision level: Intellectual Property Enterprise Court (IPEC)
Parties: BURGERISTA OPERATIONS GmbH (claimant) and BURGISTA BROS LIMITED, BURGISTA LIMITED, BURGISTA BROTHERS LIMITED, UK PROSPER LIMITED, HAMID REZA MOGHIMI, and HOSSEIN KHETRIYAN (defendants)
Citation:  EWHC 35 (IPEC)
Date: 12 January 2018
Link to full (bailii) decision: http://www.bailii.org