Reputation in one city not sufficient under Section 10(3) of Trademarks Act

In Latif v Gulec, the hearing officer has upheld an opposition against the registration of the mark THE CHARCOAL GRILL.

On September 23 2010 Muhammad Latif of Athlone, County Westmeath in Ireland, applied to register THE CHARCOAL GRILL as a trademark in Class 43 of the Nice Classification in respect of “cafés; services for providing food and drink”.

On advertisement the application was opposed by Tuna Gulec and Ali Findik (trading as The Charcoal Grill) (the opponent). Evidence was filed by the opponent under Rule 20 of the Trademarks Rules 1996. The applicant engaged with the Irish Trademarks Office in relation to the submission of evidence under Rule 21 of the Trademarks Rules but, as such evidence was not submitted by means of a statutory declaration, the controller moved the proceedings on and invited the parties to elect to attend a hearing or lodge written submissions in lieu of attending the hearing. Both parties attended a hearing.

The hearing officer, acting on behalf of the controller, upheld the opposition.

The opponent relied on its unregistered rights in the trademark THE CHARCOAL GRILL, which it alleged it had used since 2000 in relation to the provision of food and drink in the fast food/restaurant sector. The opponent alleged that it operated three restaurants in the Galway area (which is approximately a 55-minute drive from Athlone) under the name The Charcoal Grill, the first having been opened in 2000, the second in 2007 and the third in 2013. The opponent submitted evidence that it had spent approximately €1,000 per annum on advertising.  

The applicant alleged that it had been using the name The Charcoal Grill since 2008 when it registered that name as a business name.

The opponent sought to rely on Section 10(3) of the Trademarks Act 1996 on the basis that its earlier unregistered mark was a well-known mark under the Paris Convention. The hearing officer did not address whether the opponent’s mark was, in fact, a well-known mark under the Paris Convention presumably because the opponent’s argument based on Section 10(3) failed on the basis that its mark had not acquired the level of reputation that Section 10(3) seeks to protect.

In determining whether the earlier mark must be well known throughout the state or whether it is sufficient that it is well known in a single city within the state, the hearing officer referred to the decision of the Court of Justice of the European Union (ECJ) in Nieto Nuño v Monlleó Franquet (C-328/06), wherein it held that “a trademark certainly cannot be required to be well known ‘throughout’ the territory of the member state and it is sufficient for it to be well known in a substantial part of it”. However, the ECJ stated that the fact that the mark is well known in a city and its surrounding areas does not constitute a substantial part of a member state. Accordingly, the hearing officer held that, whilst he was satisfied that the opponent’s mark is well known within the city of Galway, he was not satisfied that the mark had gained sufficient reputation in the state or in a substantial part thereof under Section 10(3).

In relation to Section 10(4) of the act, the hearing officer held that the ingredients for passing off existed in this case. The hearing officer was satisfied that, on the basis of the evidence provided, the opponent did have significant and valuable goodwill in its mark. With regard to misrepresentation, the hearing officer held that:

“it would not be unreasonable for a consumer, who is familiar with the opponent’s mark, to believe, on encountering the applicant’s mark, that the opponent has expanded its business further and opened another branch in Athlone”.

In considering whether such misrepresentation would result in damage to the opponent’s business or goodwill, the hearing officer noted that the opponent had used its mark extensively and built up customers and held that the opponent was entitled to “retain and expand that use and custom, which it has already successfully done”. Accordingly, the hearing officer held that he was satisfied that the use of the mark applied for would cause damage to the opponent’s identical business.

Colette Brady, DFMG Solicitors, Dublin