Case raises interesting questions on brand selection

In Smullen v Gourmet Burger Kitchen Limited (November 17 2010), a hearing officer at the Irish Patents Office has held that there was no likelihood of confusion between the trademarks GOURMET BURGER KITCHEN and GOURMET BURGER KOMPANY under the Trademarks Act 1996.

Gourmet Burger Kitchen Limited (GBK) made an application for a declaration of invalidity in relation to Irish trademark GOURMET BURGER KOMPANY for food and drink services in Class 43 of the Nice Classification, which is owned by George Smullen and was filed in April 2007. GBK based its application on the ownership of earlier Community registrations for the device and word marks GOURMET BURGER KITCHEN in Class 43, which it had applied for in 2005, but started to use within Ireland only in 2008.

GBK argued, among other things, that based on the similarity between the marks, and the identical or similar nature of the respective goods/services, there existed a likelihood of confusion or association between the Irish mark and GBK’s marks and, therefore, the Irish mark was registered in breach of section 10(2)(b) of the act. GBK also argued that the Irish mark, without due cause, took unfair advantage of, and/or was detrimental to, the distinctive character and/or reputation of GBK’s marks within Ireland, in breach of Section 10(3) of the act. Neither party filed any evidence and there was no formal hearing.

In undertaking a global assessment of the likelihood of confusion between the marks, the hearing officer held that, while the marks had a medium to high level of overall similarity, the words ‘gourmet burger’, whether taken individually or together, lacked distinctiveness when used in connection with services for providing food and drinks, and should be kept free for use by all undertakings that provide such services.

Further, the words ‘kompany’ and ‘kitchen’ were sufficiently distinctive to enable the marks to indicate two completely different entities and, as a result, the average consumer would have no difficulty in differentiating between them. In reaching this conclusion, the hearing officer appears to have additionally taken into account the fact that the average consumer distinguishes food and drink premises based not only on a trademark, but also on get up (including shop front, décor and furnishings), which was strictly not relevant to the side-by-side assessment required under Section 10(2)(b). Ultimately, however, the decision that there was no likelihood of confusion between the marks appears to have hinged upon the generic nature of the term ‘gourmet burger’ and the addition of the two distinctive words, ‘kompany’ and ‘kitchen’. Accordingly, the application for a declaration of invalidity failed under Section 10(2)(b) of the act.

In relation to the second ground, and in considering whether GBK's Community trademarks had a reputation in the state as of the date of filing, the hearing officer held that such a reputation would be:

expected to extend beyond the limited class of direct users of the applicant’s services and to penetrate the consciousness of the wider public, such that a substantial number of people would know and recognise the mark, even if they had never used the applicant’s services”.
As GBK had adduced no such evidence, the application was also rejected on this ground.

Considering the dearth of evidence presented and that there was no hearing, the decision is perhaps not surprising. However, it is interesting to speculate as to whether Smullen would, in practice, have even pursued his initial trademark application for GOURMET BURGER KOMPANY had he sought professional trademark advice. If he had been made aware of the risks attaching to this mark based on the prior registration and possible spill-over reputation attaching to the senior GOURMET BURGER KITCHEN mark, he might have thought twice about proceeding and, as a result, would never have obtained his Irish registration.

The case raises the questions as to whether trademark advisers and in-house counsel have a tendency to be overly cautious in brand choice. While it certainly goes against the grain to admit it, sometimes too much advice can be counter-productive.  

Alistair Payne and Anna Gibson, Matheson Ormsby Prentice, Dublin

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