Bocacina Limited v (1) Boca Cafes Limited (2) Dericio De Souza Junior (3) Malgorzata De Souza [2013] EWCH 3090 (IPEC)

Case Summary  |  Judgment  |  30 October 2013

Jonathan Hill  has recently appeared in the first trial to be heard in the new Intellectual Property Enterprise Court (‘IPEC’), acting for Bocacina Limited, the successful claimant in a passing off action. The judge was Daniel Alexander QC, sitting as a Deputy Enterprise Judge.

The defendants had opened a café and bistro called ‘Boca Bistro Café’ in Bristol. The café was in close proximity to ‘Bocabar’, the claimant’s established bar, restaurant and gallery. Given the businesses’ common use of the word ‘Boca’ and their close proximity, the name chosen by the defendants was held to be likely to confuse a significant number of the public into believing they were connected.

Accordingly, passing off was established. It followed that the second defendant’s registration of the work mark ‘BOCA BISTRO CAFÉ” was invalid.

The judgment also touched on the procedures of the IPEC. Not long before trial the name of the defendants’ café was changed to ‘Bica Bistro Café’. The defendants claimed not to have any connection with the renamed business. In the circumstances the claimant elected to wait and see whether they wished to make a claim for passing off in relation to the new name until it was clear whether or not it too caused confusion, rather than amend their particulars of claim in the present case.

Despite the importance of the maxim ‘business needs to know where it stands’ in IP cases, the Court commented that, in its view, to act in this way would not be likely to be a Henderson v Henderson type abuse of process. It noted that the IPEC’s key objective was to help small and medium enterprises resolve their disputes at low cost and that it would not accord with this objective to force litigants into unnecessary fights as a result of over-zealous application of the principle from Henderson v Henderson.