The preliminary relief judge ruled that the use of the sign (SIR) FRANKLIN in the catering industry infringes the FRANKLIN trade mark, despite the user’s defence that there was no trade mark use. A brief analysis.
Recently, the preliminary relief judge ruled that the sign (SIR) FRANKLIN infringes the Benelux trade mark FRANKLIN. The sign and trade mark were both used for catering establishments.
The user of the sign (SIR) FRANKLIN argued that it was not using the sign as a trade mark and that the sign SIR FRANKLIN was not confusingly similar to the mark FRANKLIN.
Infringement injunction granted
The interlocutory court does not go along with this and grants an injunction against infringement. Read the main consideration of the ruling below.
Trademark use occurs when a sign is used in such a way as to create a link between the sign identifying an undertaking and the goods being put on the market or services being provided.
Pursuant to Article 2.20(2)(b) BTIP, a trade mark proprietor may prohibit a third party who has not obtained his consent from using, in the course of trade, a sign which is identical with or similar to the trade mark in relation to the same or similar goods or services for which the trade mark is registered, if this is likely to cause confusion among the relevant public.
All relevant circumstances
The likelihood of confusion should be assessed globally according to the impression the signs make on the average consumer of the goods or services concerned, taking into account all relevant circumstances of the case.
In the case of catering businesses, one such circumstance is that online reviews are important, as the catering public often chooses an eatery based on such reviews.
If a third party uses a sign similar to a trademark on TripAdvisor, there is a likelihood of confusion. This is all the more true since it is not unusual for catering establishments to be part of a chain and operate in several locations at the same time.
Descriptors for hospitality industry
The addition of ‘Boutique hotel’, ‘Brasserie’ and ‘Cocktail bar’ are descriptive elements for a catering establishment and does not take the public’s attention away from the distinctive element of a sign and therefore does not make it non-infringing.
