29 January 2012

Trade Marks: "The Griller", Ghias v Ikram and Others

This was a decision by Mrs Recorder Michaels who sits as an appointed person in appeals from hearing officers in the Trade Marks Registry under s.77 of the Trade Marks Act 1977. She is therefore used to oppositions under s.5 and applications for invalidity under s.47 (2) of that Act where there will have been no oral evidence and in many cases no hearing.   You will find the transcript of her judgment at Ghias v Ikram and Others [2012] EWPCCC 3.

The Registered Marks
The claimant had registered the following British trade marks:

2,326,754  






for a wide range of foods and beverages in classes 29, 30 and 32 and various services in class 43 including "Restaurant, bar and catering services." with effect from 15 March 2003.

2,376,629















for the same range of goods and services with effect from 26 Oct 2004.

In her judgment, the recorder referred to 2,326,754 as "the logo" and 2,376,629 as "the device". As both marks are obviously logos and devices I prefer to call the former "flames" and the latter "chicken".

The claimant had used the marks in a Halal fast food restaurant in Chadwell Heath and had franchised between 10 and 14 other outlets in various parts of London to trade under those signs. There was scant evidence as to how much business was done by the claimant and his franchisees. The turnover of the Chadwell Heath store was said to have grown from £35,000 in 2005 to £90,000 while that of the chain was estimated at between £770,000 in 2008 to just over a million in 2009. Not quite in Colonel Saunders or McDonald's league.

The Claim
There were three separate groups of defendants with no connection with each other but they all ran fast food restaurants in different parts of London under signs that included the word "Griller". Sensibly, they call instructed the same solicitors who in turn briefed the same counsel.

The first and fourth defendants ran restaurants known as "The Griller Original" in Gants Hill (not a million miles from Chadwell Heath) and "the Griller" in Canning Town (also in East London but somewhat further away).

The second defendant trades as "The Griller King" in Croydon, a hefty trek from Chadwell Heath whether by car or public transport, under the following sign.


Finally, the third and fifth traded as "The Griller Hut" in South Norwood, also in South London and hence a traipse from Chadwell Heath.  Their sign was:

The claimant, who had represented himself for most of the litigation, complained in the claim form:
"All 3 Defendants have violated our legitimate legal trade mark rights under Trade Mark Act 1994 and Any other law [sic] court see relevant."
There was no indication of the particular sub-section of s.10 of the Trade Marks Act upon which he relied so the poor old recorder had to consider them all.  There was an attempt at trial to run a claim for passing off but as it had not been specifically pleaded and as the case management directions had allowed just one witness statement from the claimant on reputation, the learned recorder (rightly in my view) refused to allow it.   Given the very modest sales of the claimant and the travelling time for journeys between South and East London I am not sure that it would have made much of a whole hep of difference at the end of the day.

The Judgment
In a long and very careful judgment, Ms. Michaels considered the claim against each of group of defendants under s.10 (1), (2) and (3) of the Trade Marks Act 1994. In each aspect of the claim she relied heavily on the recent judgment of Mr. Justice Arnold in Och-Ziff Management Europe Ltd and Another v Och Capital LLP and Another [2010] EWHC 2599 (Ch) (20 Oct 2010), [2011] FSR 11, [2011] ECC 5, [2011] ETMR 1. She threw out the claims under s.10 (1) against all the defendants on the grounds that none of them used a sign that was identical to the registered marks. Similarly, she kicked into touch all the claims under s.10 (3) on the ground that the claimant's marks had no reputation in the UK. Applying the analysis that Mr. Justice Arnold had propounded at paragraphs [73] to [76] of Och-Ziff she concluded that the first and fourth defendants had infringed the flames mark under s.10 (2) but not the chicken and that the first defendant was personally liable under the Charly Records test.   However, the claims against all the other defendants under s.10 (2) were dismissed.

Conclusion
This case together with Hoffman v Drug Abuse Resistance Education (UK) Ltd [2012] EWPCC 2 (19 Jan 2012) and Mitchell v BBC   [2011] EWPCC 42 (21 Dec 2011) are examples of cases that probably would not have come before Judge Fysh QC or Judge Ford under the old Part 63 of the Civil Procedure Rules and the Part 63 Practice Direction.  As I said in my post on the New Patents County Court Rules on 31 Oct 2010 that was because it used to cost an average of between £150,000 and £250,000 to bring an action in the Patents County Court.   There are likely to be more such cases when the new small claims track is introduced for copyright, trade mark and unregistered designs cases in October 2012 (see the IPO's consultation document "Introducing a small claims track into the Patents County Court", Jan 2012). This shows that the reforms to the Patents County Court proposed by Jackson, Arnold, Gowers and Haregreaves are beginning to work. If it encourages innovation in the UK it will be no bad thing.

As ever, anyone wanting to discuss this case with me can give me a bell on 0800 862 0055 or contact me through Facebook, Linkedin, Xingtwitter or my contact form.

1 comment:

Anonymous said...

If you check the (expired) UK trade mark number 1123459 there is a rather cryptic message about the word "GRILLERS" in the restrictions on exclusive use field.

"Grillers" was, as far as I recall, a descriptive term in those days and I well remember the Birds Eye adverts where the late John Wells made the mistake of confusing the word "Grillers" with "Gorillas".