Evidence of likelihood of confusion under Section 10(2) must be compelling
In Ghias (t/a Griller) v Ikram ( EWPCC 3, January 24 2012), Miss Recorder Michaels, sitting in the Patents County Court, has partly upheld, but largely dismissed, claims of infringement under Sections 10(1), (2) and (3) of the Trademark Act 1994 brought by a fast food business chain trading as 'Griller' against three similar businesses trading as 'Griller'/'The Griller Original', 'The Griller King' and 'Griller Hut'.
The claimant had run a Halal fast-food business under the name Griller since 2003. In the same year he registered two UK trademarks in relation to that business, both for the same specification of goods and services which included a range of foods and beverages in Classes 29, 30 and 32 of the Nice Classification, and a range of services in Class 43, notably “restaurant, bar and catering services”. One mark consisted of the word 'Griller' with flame effects on either side, having no colour limitation ('the logo mark'), and the other consisted of the word 'Griller' and the flame device of the logo mark in flame-red, and a device of a chicken dressed as a waiter, partly coloured in yellow, red and orange ('the device mark'):
The claimant had at all times used these registered trademarks as the main house mark and sign above the restaurant, on menus, leaflets, website and Facebook, and spent a considerable amount of money on advertising and promotion. Furthermore, these marks were used in the claimant’s franchises in England and Wales.
The claimant had become aware of The Griller Original and the Griller, a restaurant chain in London owned by the first/fourth defendant, following a customer's letter complaining about the poor quality of food they had received at “one of [the claimant’s] franchises”. The sign over the Griller Original restaurant was the word 'Griller' in large red letters, spelt with a capital 'G', and with the words 'the' and 'original' in tiny red letters. Over the Griller restaurant was signage with the word 'Griller' in white letters on a black oval background.
The second defendant ran a fast food restaurant called The Griller King, also located in London. The second defendant's signs included a general type of fascia comprising the words 'Griller King' appearing side by side in red capital letters and a roundel device:
The third/fifth defendant traded as 'The Griller Hut', a fast food restaurant in South London. The sign over the restaurant comprised the words 'Griller Hut' stylised in grey-blue capital letters to look like gas flames, in combination with a logo of a chicken sitting on top of a pitched roof:
The claimant claimed to have goodwill in the name Griller and sued all five defendants for passing off as well as different acts of trademark infringement. However, the claim for passing off was deemed inadmissible due to insufficient evidence, so the court only dealt with the alleged trademark infringement under Sections 10(1), (2) and (3).
With regard to Section 10(1), the court noted that all the defendants' marks were “plainly not strictly identical” to the claimant’s marks, and referred to the definition of 'identity' in LTJ Diffusion v Sadas Vertbaudet (Case C-291/00), as reiterated in Och-Ziff ( EWHC 2599 (Ch)):
“a sign is identical with the trademark where it reproduces, without any modification or addition, all the elements constituting the trademark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer”.
The claimant sought to argue that the word 'Griller' was the main and dominant element in his marks and those of the defendants, and that the use of the word was close enough to mean that the defendants’ marks were identical. The court, however, held that this would soften the strict identity test too far. Differences between the marks, such as the flame element or addition of the word 'original', would not go unnoticed by an average consumer. Accordingly, all the claims of infringement under Section 10(1) failed.
The court then considered the 'likelihood of confusion' test to be applied under Section 10(2), as set out in Och-Ziff. The court also pointed out that there was an additional factor to bear in mind when comparing the claimant’s marks with those of the defendants: the fact that 'Griller' was descriptive did not necessarily mean that it was to be disregarded as the distinctive and dominant component of the mark for the purpose of an assessment under Section 10(2), but due regard had to be given to the other elements of the composite marks so as to examine each of the marks as a whole.
With regard to the goods and services provided, the court found that all the defendants provided services identical to those for which the claimant’s marks were registered.
With regard to the similarity of marks, the overall impression of the claimant's mark heavily depended on the word 'Griller', and, therefore, that word had “an independent distinctive role in the mark”. In the defendants' marks, the court found that the word 'Griller' was either dominant or had some importance in being the first word where it was used in combination with another word. Accordingly, it was held that there was some visual, aural and conceptual similarity between the marks, albeit sometimes reduced or extremely low where 'Griller' was used in combination with other words like 'King' and 'Hut' that were the same size, style and colour of font.
In considering whether the similarities led to a likelihood of confusion, it was necessary to take into account the identity of the services, the identity of the average consumer of the services at issue, and the inherent or enhanced distinctiveness of the marks. Evidence of actual confusion was not necessary. However, in marginal cases, “the case will fail in the absence of enough evidence of the likelihood of deception”.
Given the identity of the services and the dominant nature of the 'Griller' element, the court concluded that there was a likelihood of confusion under Section 10(2) between the logo mark and 'Griller' and 'The Griller Original', but not with the device mark. However, it found no likelihood of confusion with 'Griller King' and 'Griller Hut' in relation to either of the claimant’s marks.
Turning to the issue of reputation under Section 10(3), and applying principles outlined in Och-Ziff, the court ruled that:
- the claimant had failed to show that “a significant part of the public concerned” knew his marks; and
- although the marks had some level of enhanced distinctiveness, the lack of evidence of market share, extent of use of the mark and investment in the marks showed that they had not gained sufficient reputation to warrant the application of Section 10(3).
The assessment of identity under Section 10(1) is strict. Further, infringement under Section 10(2) is a cumulative assessment based on several factors and, whilst these can still point to the possibility of confusion even in the absence of clear, reliable and convincing evidence of actual or possible confusion, where the case is 'marginal' (as was the claimant’s case against 'Griller King' and 'Griller Hut'), the evidence of a likelihood of confusion must be compelling. Additionally, in order to succeed under Section 10(3), the onus is on the claimant to show that its marks are known to “a significant part of the public concerned”, as some level of enhanced distinctiveness of a mark of itself may be insufficient to establish the necessary reputation.
Rohan Massey, McDermott Will & Emery UK LLP, London
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