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Trade Mark Inter Partes Decision O/374/10

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Trade Mark Inter Partes Decision O/374/10 O-374-10 TRADE MARKS ACT 1994 IN THE MATTER OF INTERNATIONAL REGISTRATION NO. 956717 IN THE NAME OF EMME SEI S.P.A. AND IN THE MATTER OF OPPOSITION THERETO UNDER NO. 71797 BY BUFFALO GRILL BACKGROUND 1.On 29 January 2008, EMME SEI S.P.A. (“Emme”) requested protection in the United Kingdom of the international registration (IR) of the following trade mark: “The trademark is made up by a stylized rectangular head of cow with typical horns and the fancy words "Fratelli la Bufala" and "Pizzaioli emigranti" placed between two stylized suns.” 2. The United Kingdom Trade Marks Registry (“TMR”) considered that the request satisfied the requirements for protection and particulars of the IR were published in Trade Marks Journal No. 6738 on 6 June 2008 for the following services in class 43: Catering services and all services in connection with the management and operation of restaurants, pizzerias, fast-food restaurants, snack bars. 3. On 5 September 2008, Buffalo Grill (“Buffalo”) filed a notice of opposition. This consisted of a single ground based upon section 5(2)(b) of the Trade Marks Act 1994 (as amended) (the Act). Buffalo indicate that their opposition is based upon the following trade mark: Trade Mark No. Application Registration Services in Date Date class 42 CTM 01.04.1996 19.05.1999 Restaurants 190082 2 4. In the Statement of Grounds accompanying their opposition Buffalo said: “The opponent’s trade mark is a stylised mark BUFFALO GRILL and contains horns and the words “buffalo grill”. The mark opposed is a stylised mark also featuring a set of horns and the words FRATELLI LA BUFALA PIZZAIOLI EMIGRANTI. The dominant element of this mark is the set of horns and the words FRATELLI LA BUFALA. PIZZAIOLI EMIGRANTI is depicted in smaller writing and is a less dominant element of the mark. These two trade marks are confusingly similar due to both containing horn elements and the similar words “buffalo” and “bufala”. 5. On 9 December 2008, Emme filed a counterstatement. As this contains the only comments I have from them on the merits of the opposition it is reproduced below in full. Having admitted the existence of Buffalo’s registration but not its validity (I note that in boxes 5 and 6 of their counterstatement Buffalo ask Emme to provide proof of the use they have made of their trade mark), Emme go on to say: “2. The applicant denies that it’s applied for mark is similar to the opponent’s mark. The applicant’s mark is a complex mark made up of several elements each distinctive in its own right. The words in the applied for mark FRATELLI LA BUFALA bear no resemblance at all to the words BUFFALO GRILL in the opponent’s mark. The average person in the UK would not know the meaning of La Bufala and would simply recognise an Italian or Spanish connotation. The arrangement of the separate elements in the applied for mark create a composite mark which would never be confused with the opponent’s mark. In the opponent’s mark the horns are highly stylised and bold and determine the overall shape of the mark which is equally dominated by the words BUFFALO GRILL. In the applied for mark there is a stylised head of a cow with horns on which the words LA BUFALA have been placed. These are surrounded by other words which all combine to create a mark which, when considered as a whole, gives a completely different impression. The services, while identical, are of a kind which render confusion between the respective marks unlikely. No one seeing or knowing the Buffalo Grill restaurant would venture into the LA BUFALA restaurant by mistake thinking it was a BUFFALO GRILL restaurant. Nor would anyone book a table at La Bufala believing in to be a Buffalo Grill.” 6. Only Buffalo filed evidence. While neither party asked to be heard or filed written submissions in lieu of attendance at a hearing, during the evidence rounds Buffalo filed a witness statement, dated 21 October 2009, from Clare Lorimer who is a partner in the firm of Phillips & Leigh (their professional representatives in these proceedings) which contained legal arguments. Consisting of arguments rather than evidence it is not necessary or appropriate for me to summarise these submissions here; I will however 3 refer to them as necessary below. After a careful consideration of all the material before me, I give this decision. Buffalo’s evidence 7. This consists of two witness statements. The first, dated 19 October 2009, is from Jean-François Sautereau who is the Président du Directoire of Buffalo. Mr Sautereau explains that he has been employed by Buffalo for one year; he confirms he has full access to Buffalo’s records and is authorised to make his statement on their behalf. The second witness statement, dated 6 January 2010, is from Amanda Conrad a translator at Amanda Conrad Translations; Ms Conrad states that she is conversant with the French, Spanish and English languages. The purpose of her statement is to translate into English extracts from exhibits 1 to 4 to the statement of Mr Sautereau. 8. Mr Sautereau explains that Buffalo Grill is a French restaurant chain which began in 1980 when their first restaurant opened in Avrainville in the Essonne region of France; he states that “the restaurant is a steak house well known in the European market”. He goes on to say that today (i.e. October 2009 the date of his statement), the chain has restaurants in France, Spain, Belgium, Switzerland and Luxembourg with over 320 restaurants employing over 6,000 employees and serving up to 32 million diners per year. He provides a list of key dates in the opponent’s development. Briefly, these are as follows: 1980: First restaurant opens in Avrainville; 1984: Second restaurant opens in La Ville-du-Bois and Annecy; 1990: 39 restaurants including 11 franchises; 1994 100th restaurant opens in Mulhouse; 1995: 131 restaurants including 38 franchises; 1997: First international restaurant opens in Spain; End 2000: 217 franchises, 71 restaurants in France and 9 branches abroad in Spain, Belgium and Switzerland; 2005: 284 restaurants including 109 franchises; 2008: More than 300 restaurants and 20 openings planned. 9. Attached to Mr Sautereau’s statement are four exhibits; these are as follows: Exhibit 1 consists of pages downloaded from the website www.totocam.com/buffalogrill.htm on 8 June 2009 which Mr Sautereau describes 4 as “a list of French Buffalo Grill restaurants…”. The translated version of this exhibit indicates that the restaurants (of which some 290 are listed under the name BUFFALO GRILL) appear under the heading “List of restaurants specialising in far-west style BUFFALO GRILL grilled meat”; the final translated page appears to indicate that this was the position on 2 March (presumably of 2009). Exhibit 2 is described as “a promotional article regarding Buffalo Grill in Spain”. The pages (which may date from 2004 and which I note contains Buffalo’s registered trade mark), describes the history of Buffalo’s restaurants and provides details on, inter alia, the nature of the dining experience and the associated costs. Exhibit 3 is described as “a selection of advertisements for Buffalo Grill published in Spain.” Only 1 of the 3 pages provided has been translated. The first page which is dated 29 August (but no year is discernable) contains the trade mark the subject of Buffalo’s registration, as does page 2 (which shows images of food). The final page which has been translated and which also bears the registered trade mark, contains a list of Buffalo’s restaurants in Spain, the address of their head office and a money saving coupon. Exhibit 4 is described as “a selection of advertisements for Buffalo Grill published in Belgium”. Once again of the seven pages that have been provided only 1 has been translated. While only one of the pages can be positively dated (from 2006), all of the pages contain Buffalo’s registered trade mark, and the single page which has been translated relates to a restaurant service. Exhibit 5 is described as “a selection of menus from Buffalo Grill in Spain.” While this exhibit has not been translated and does not carry a date, one is able to discern that it is a menu in the Spanish language, on the front page of which Buffalo’s registered trade mark can be seen. Exhibit 6 is described as “a selection of invoices issued to Buffalo Grill in Spain.” While I am able to discern some information from these invoices, I note, for example, that invoices 1/8, 2/8 and 3/8 are made out to BUFFALO GRILL ESPAŇA S.A. and BUFFALLO GRILL (Majadahonda) respectively and are dated 13 April and 17 March 2009 respectively, as no translation into English has been provided they are of very little assistance. 10. That concludes my summary of the evidence provided to the extent I consider it necessary/possible. DECISION 11. The opposition is based solely upon section 5(2)(b) of the Act which reads as follows: 5 “5 (2) A trade mark shall not be registered if because - (b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.” 12. An earlier trade mark is defined in section 6 of the Act, the relevant parts of which state: “6.-(1) In this Act an “earlier trade mark” means - (a) a registered trade mark, international trade mark (UK) or Community trade mark or international trade mark (EC) which has a date of application for registration earlier than that of the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks, (2) References in this Act to an earlier trade mark include a trade mark in respect of which an application for registration has been made and which, if registered, would be an earlier trade mark by virtue of subsection (1)(a) or (b), subject to its being so registered.” 13.
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