English language continues to evolve, as evidenced by new dictionary entries. The defendants' second contention was that where a mark is largely descriptive 'small differences may suffice' to avoid confusion. The defendants opened their first burger restaurant in London in September 2015, with other branches following shortly after that. The defendants contended that the average consumer would consider the word to be composed of two parts: 'burger' and the suffix '-ista'.
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Hacon J referred to previous case law pointing out that, in the real world, the public tend to focus on the non-descriptive parts of a mark and sign and use those parts to distinguish one trader from another. The claimant brought an action alleging infringement of the Trade Mark, seeking an injunction to restrain further use of the Burgista sign. Since Uncle Van was highly rated I went for it even though Im spending only the day in Salzburg. However, Hacon J considered that the evidence did support the claimant's case that if the parties were to trade in the same locality under their respective mark and sign (that is, in a context that would matter the average consumer would be likely to confuse. In a recent case the Intellectual Property and Enterprise Court decided that the trade mark burgerista had been infringed by the use of the sign 'Burgista'. They were therefore not a reliable guide to what the English-speaking average consumer in the EU understood. In Hacon J's view, the average consumer's understanding was a long way from an immediate perception that burgerista had any of the three alternative meanings proposed by the defendants. The defendants contended that this was not relevant to the likelihood of confusion within the meaning of Article 9(2 b). The judge took this further and stated that the court will be careful to discount confusion which has arisen solely because of the purely descriptive elements common to both marks.
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