Bocacina Ltd v Boca Cafes Ltd
| Jurisdiction | England & Wales |
| Judge | Daniel Alexander,Mr Daniel Alexander |
| Judgment Date | 14 October 2013 |
| Neutral Citation | [2014] EWHC 26 (IPEC),[2013] EWHC 3090 (IPEC) |
| Docket Number | Claim No. CC12P04557 |
| Court | Intellectual Property Enterprise Court |
| Date | 14 October 2013 |
[2013] EWHC 3090 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Rolls Building
110 Fetter Lane,
London
EC4A 1NL
Mr Daniel Alexander QC
Sitting as an Enterprise Judge
Claim No. CC12P04557
Mr Jonathan Hill (instructed by Humphreys & Co) for the Claimant
The Second Defendant in person
Hearing date: 8 October 2013
Approved Judgment
I direct that, pursuant to CPR PD39A para 6.1, no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Daniel Alexander QC
Mr Daniel Alexander QC
Introduction
The main issue in this action is whether the defendants who, until recently, operated a restaurant and bar in Bristol under the name "Boca Bistro Café" are liable for passing off, having regard to the claimant's earlier use of the mark "Bocabar" for an earlier bar and restaurant in Bristol and "Boca" for some of the goods and services provided there. There is a secondary issue as to whether the defendant's trade mark registration for BOCA BISTRO CAFE should be declared invalid.
The defendants filed no skeleton argument or evidence (save as in the defence), despite the order of HH Judge Birss QC and, when the case was called on, they were not present. I adjourned the hearing for a few hours to give the defendants further time to attend and, when the hearing resumed later in the day, the second defendant came and advanced oral argument in effect on behalf of all of the defendants.
Summary of facts
The claimant ("Bocacina") operates a successful and trendy bar, restaurant and gallery in Bristol under the name Bocabar. The Bocabar is sometimes referred to as the Boca bar or simply Boca and some of its meals and services are provided just using the mark Boca (such as Boca pizza, Boca salad, Boca roasts, Boca bargains, Boca brownies and Boca Socca — a football night).
The Bocabar, which is located in the Bristol Paintworks development, opened in 2005 and has used that name ever since in plain text or in stylised form with a logo. It serves a range of food and drink, not particularly focussed on any given region, including pizzas, salads and delicatessen foods, including tapas, as well as breakfast and a range of drinks (non-alcoholic, wine and cocktails). Some perceive that there is a Brazilian flavour to the place as a result of one of the people behind it.
The Bocabar has been successful and in recent years (2008–2011) has enjoyed a turnover of in excess of £1million p.a. The evidence shows that it is widely known in Bristol, particularly in the immediate vicinity, albeit probably less so further afield.
The business has also had a website: www.bocabar.co.uk which has prominently displayed the mark Bocabar including in stylised form. The web-site receives a substantial number of visits, including many thousands of page views and unique visitors a year. The mark Bocabar is prominently displayed at the bar and on menus. There has been substantial advertising in the local press and by way of flyers, all of which has included the mark Bocabar. Local art exhibitions have been held at the Bocabar as well as music and fashion events.
The Bocabar has been the subject of considerable press exposure including reviews in local guides and newspapers as well as on web-sites promoting visits to Bristol.
Bocacina or its predecessors in business, previously operated two other food business in Bristol, a delicatessen called Bocacina (operated for four years from 2003–2007 using a web-site at www.bocacina.co.uk) and a restaurant called Bocanova (operated from 2000–2008 using a web-site at www.bocanova.co.uk). The goodwill of that restaurant was assigned to Bocacina.
The defendants, Boca Cafes Limited and two individuals, Mr Dercio De Souza Junior and Mrs Malgorzata De Souza (who run Boca Cafes Limited), started up a cafe and bistro entitled the Boca Bistro Café in or about 2012. The Boca Bistro Café is also in Bristol, not very far away (3 miles) from the Bocabar. It has a more Portuguese theme than the Bocabar but it also serves breakfast lunch and dinner and snack-type meals of a similar kind to that of the Bocabar (including a big breakfast of the same name "Big Boca breakfast"). Like the Bocabar it serves a wide range of drinks. Like the Bocabar it has served Sunday roasts and has been a venue for live music.
The defendants registered the company name Boca Cafes Limited and successfully registered the trade mark BOCA BISTRO CAFE in respect of cafeteria and restaurant services in class 43. Registration was achieved on 20 January 2012, having been applied for in 2011.
Internet searches for terms such as "Boca Bristol" or "Boca Restaurant Bristol" bring up both parties in close proximity.
Earlier this year, according to the second defendant, the first defendant apparently ceased trading and the company is on the way to being removed from the register. A cafe now trades at the same place " Bica Bistro Café" which uses the same Facebook account. The second defendant said in his submissions (he did not give evidence) that he did not know who was running this cafe although his wife, the third defendant, is a director of a company with "Bica" in its name registered to the same address giving rise to a strong suspicion of a continuing connection, which it is impossible to confirm on the state of the evidence before me now.
Issues
HH Judge Birss QC identified the following three issues as requiring determination in the order for directions dated 23 April 2013:
(i) 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?
(ii) 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?
(iii) Should the defendants' UK trade mark registration no. 2594410 be declared invalid?
There is no dispute that the defendants are jointly liable for any tort, if any has been committed. Following a request from Bocacina to which the defendants agreed, HH Judge Birss QC gave a preliminary non-binding indication that the defendants' defence was not meritorious and that the claim was likely to succeed.
The recent change of name
At some point in the summer of 2013, without informing Bocacina, there was a change of name of the café on that site to Bica Bistro Café— and (so it is said) a change in the people behind it. That prompted further correspondence from Bocacina's solicitors dated 20 August 2013 in which they said (in essence) that this minor change would not be sufficient to avoid passing off and requested that the use of Bica stop as well. They indicated an intention to amend the Particulars of Claim to that end but, in the event, that was not done and Bocacina's stance is that they will wait to see whether there is significant confusion as a result of the use of the term "Bica" for that business to merit pursuit of that further complaint. Their position on this is therefore reserved.
At the hearing, I invited consideration of whether that was a satisfactory course, given the potential impact of Henderson v. Henderson on any further action. Counsel for the claimant indicated that his client appreciated the risk of Henderson v. Henderson estoppels and was prepared to take it.
I think this is the correct course in this case and, in my judgment, even though this cannot bind a future court, it is appropriate for this court to indicate briefly why, so that a future court can consider the thinking at that stage. Even if it turns out that there are defendants common to those in the present action behind the "Bica Bistro Café", having regard to the principles in Johnson v. Gore Wood & Co. [2000] UKHL 65; [2001] 1 All ER 481; [2001] 2 WLR 72, I do not think that it would give rise to an estoppel. In Johnson, Lord Bingham said:
"The underlying public interest is the same: that there should be finality in litigation and that a party should not be twice vexed in the same matter. This public interest is reinforced by the current emphasis on efficiency and economy in the conduct of litigation, in the interests of the parties and the public as a whole. The bringing of a claim or the raising of a defence in later proceedings may, without more, amount to abuse if the court is satisfied (the onus being on the party alleging abuse) that the claim or defence should have been raised in the earlier proceedings if it was to be raised at all. I would not accept that it is necessary, before abuse may be found, to identify any additional element such as a collateral attack on a previous decision or some dishonesty, but where those elements are present the later proceedings will be much more obviously abusive, and there will rarely be a finding of abuse unless the later proceeding involves what the court regards as unjust harassment of a party. It is, however, wrong to hold that because a matter could have been raised in early proceedings it should have been, so as to render the raising of it in later proceedings necessarily abusive. That is to adopt too dogmatic an approach to what should in my opinion be a broad, merits-based judgment which takes account of the public and private interests involved and also takes account of all the facts of the case, focusing attention on the crucial question whether, in all the circumstances, a party is misusing or abusing the process of the court by seeking to raise before it the issue which could have been raised before.
In intellectual property...
To continue reading
Request your trial
-
Decision Nº O/206/15 from Intellectual Property Office - (Trade market), 30 April 2015
...v. Beyond Properties Pty Ltd & Ors [2007] EWHC 1251 and, as regards catering businesses, Bocacina Limited v. Boca Cafes Limited [2013] EWHC 3090 (IPEC)). It need not be national in scope. 31. In those circumstances, I consider that the Hearing Officer had a reasonable basis in law and on th......