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First decision of the brand new Intellectual Property Enterprise Court

On 1 October 2013, the Patents County Court (PCC) of England and Wales was renamed the "Intellectual Property Enterprise Court" (IPEC).

The change was made to reflect the Court's jurisdiction more accurately. As the new name suggests, a wide range of intellectual property matters (i.e. those concerning patents, trade marks, registered designs, unregistered designs, copyright, passing off etc.) can be heard before the IPEC.

The inaugural judgment of the IPEC, by an "Enterprise Judge", in Bocacina Ltd v Boca Cafes Ltd & Ors [2013] EWHC 3090 (IPEC) has recently been published (available here).

The facts

The case concerns a classic 'passing off' scenario. The claimant, Bocacina, operates a bar/restaurant and gallery in the centre of Bristol, under the name "Bocabar", serving a range of food and drink, including tapas and breakfasts. Bocabar is sometimes referred to by its clientele as "Boca".

Bocabar opened in 2005 and has used the name ever since. It has been a successful business and the evidence suggested that Bocabar was widely known in Bristol, particularly in the immediate vicinity. There had also been substantial local advertising and considerable press exposure, including reviews in local guides, newspapers and websites.

The defendants opened "the Boca Bistro Café" in 2012. The Boca Bistro Café is also in Bristol, approximately 3 miles from the Bocabar. Although it has a Portuguese theme, it also serves food and drink, including similar food to that on offer at the Bocabar (including, the "Big Boca Breakfast").

In January 2012, the defendants successfully registered a UK trade mark for BOCA BISTRO CAFE, for café and restaurant services in class 43.

The IPEC was asked to determine whether the defendants' actions constituted passing off and also whether the defendants' UK registered trade mark should be declared invalid.

Key elements of passing off

The necessary elements of an action in passing off are:

(i) the claimant's goods/services must have acquired a goodwill and reputation in the market and be known by some distinguishing feature (e.g. a brand name or logo);

(ii) there is some form of misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that the goods or services offered by the defendant are the goods or services of the claimant; and

(iii) the claimant has suffered or is likely to suffer damage as a result of the erroneous belief resulting from the defendant's misrepresentation.

The decision

The IPEC held that Bocacina had a significant, but substantially local, goodwill centred on Bristol and the surrounding area, attaching to the mark "Bocabar" and, to a lesser extent, "Boca". It was clear from the advertising and press reports submitted as evidence, that many thousands of people in Bristol would have heard of Bocabar and possibly had eaten or drunk there. Given the city-wide circulation of such advertising and press reports, it was found that the goodwill extended to Bristol and beyond.

Considering the similarity of the names of the businesses, their proximity and the similarity of the type of food and services offered, it was found that there was a likelihood that a significant number of people would be confused into thinking that the two businesses were associated. The evidence included a number of instances of actual confusion, where individuals had thought that the Boca Bistro Café was another business owned by the claimant. The IPEC held that the defendants had made a misrepresentation that their business or their goods or services were those of the claimant, or someone connected with it.

The IPEC held that where there is goodwill and misrepresentation, damage will necessarily follow. The claim for passing off was therefore successful.

The IPEC also held that the trade mark registration for BOCA BISTRO CAFÉ was invalid under section 5(4) of the Trade Marks Act 1994. As a result of the successful passing off claim, this was inevitable.

Comment

The first decision of the IPEC may not be a game changer. However, it is a useful reminder of the key principles of the law of passing off, as well as a demonstrating that registered trade marks are not infallible and can always be challenged post registration.

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