Legal Updates - Bocacina Ltd v Boca Cafes Ltd and Others

Intellectual Property – Bocacina Ltd v Boca Cafes Ltd and Others – Passing Off

In the recent case of Bocacina Ltd v Boca Cafes Ltd, Dercio de Souza junior, Malgorzata de Souza [2013] EWHC 3090 (Ch), the Intellectual Property Enterprise Court held that the defendants were liable for passing off because they had been operating a restaurant and bar in Bristol under the name, “Boca Bistro Café”.

Background

• The claimant operates a bar, restaurant and gallery in Bristol under the name “Bocabar”. Some of the meals and services were provided using the mark Boca, e.g. Boca pizza, Boca salad etc.;
• The Bocabar is located in the Bristol Paintworks development and opened in 2005. It has always used the name, either in: (i) pain text; or (ii) stylised form with a logo. The mark Bocabar is displayed at the bar and on menus, including in a number of local advertisements. The Bocabar serves a range of food and drink;
• The Bocabar has been successful and enjoyed a turnover of over £1 million per annum;
• There is a website, www.bocabar,co.uk, which receives a large number of visits per year;
• The claimant previously operated other food businesses in Bristol, namely: (i) a delicatessen called Bocacinal and (ii) a restaurant called Bocanova. Both of these businesses had ceased trading by 2008;
• The defendants started a café and bistro called Boca Bistro Café in or about 2012. The Boca Bistro Café is located about 3 miles from the Bocabar, and has a more Portuguese theme than the Bocabar. However, it also serves breakfast, lunch and dinner as well as snacks, including a breakfast called “Big Boca breakfast”, like the Bocabar;
• The defendants own the trade mark BOCA BISTRO CAFÉ in respect of cafeteria and restaurant services in class 43. Registration was achieved in January 2012;
• Early in 2013, the second defendant declared that the first defendant ceased trading and now a café trades in its place, under the name, “Bica Bistro Café”.

Issues

In the order for directions dated 23 April 2013, HH Judge Birss QC identified three issues, namely:

1. Does goodwill or reputation attach to the claimant's goods or services in the mind of the purchasing public or trade by association with the word "Bocabar" or "Boca" and if so what is the nature and extent of that goodwill?
2. Have the defendants misrepresented to the public or trade that their business or their goods or services are those of the claimant or someone connected with it?
3. Should the defendants' UK trade mark registration no. 2594410 be declared invalid?

The Law

The elements of a successful action for passing off are stated in Reckitt & Colman Products Ltd. v. Borden Inc. (Jif Lemon) [1990] RPC 341, as follows:

1. The plaintiff’s goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature;

2. There is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the plaintiff; and

3. The plaintiff has suffered to is likely to suffer damage as a result of the erroneous belief engendered by the defendant's misrepresentation."


Outcome

The court decided that the claim for passing was successful and as a result, the registered trade mark was declared invalid. The reasoning is explained below:

• Goodwill and Reputation
  1. The judge rejected the defendants’ arguments that the claimant’s goodwill was very small.
  2. The judge found the evidence presented (as described in the Background above) was sufficient to demonstrate that substantial goodwill and reputation attached to the claimant’s restaurant, bar, café, gallery and music venue services in the minds of the purchasing public and trade association with the word “Bocabar” or “Boca” and the goodwill and reputation extends throughout Bristol and surrounding area.
  3. Bocacina had significant goodwill at all material times.

• Confusion and misrepresentation
  1. The judge took the view that there was likelihood that a significant number of people would be confused into thinking that the claimant's and defendants businesses were connected. In reaching this view, the judge had regard to the circumstances, including:
     1. The similarity of the names;
     2. The proximity of the businesses; and
     3. The similarity of the food and services offered.
  2. There were also a number of instances of confusion, verified by a witness statement, which was unchallenged by the defendants.

• Damage
  1. If there is goodwill and misrepresentation, there would be damage. As such, the claim in passing off was successful.

• Validity of the defendants’ registered trade mark
  1. The judge had made it clear to the parties that, if there was a finding of passing off and the defendants' conduct was one example of normal and fair use of the mark, it was inevitable that the trade mark would be invalidly registered as a result of section 5(4) of the Trade Marks Act 1994.
  2. In light of the finding of passing off, the claim for invalidation of the registered trade mark also succeeded.

For any queries on copyright or IP law issues, you may contact us by email [email protected]. Visit http://www.rtcoopers.com/practice_intellectualproperty.php or consider our article on How to Defend Allegations of Passing Off.

© RT COOPERS, 2013. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.