Businesses with local goodwill can successfully rely on passing off

In Bocacina Ltd v Boca Cafes Ltd ([2013] EWHC 3090 (IPEC), October 14 2013), the Intellectual Property Enterprise Court (formerly the Patents County Court) has held that Boca Cafes Ltd was passing off its business, goods and services as the claimant's Bocabar by using the names Boca and Boca Bistro Cafe. 

The claimant and defendants are restaurateurs in the Bristol area. The claimant, Bocacina, runs a trendy, popular and successful bar, restaurant and gallery called Bocabar, often called the 'Boca' bar or 'Boca'. The claimant has used 'Bocabar' in either plain text or stylised logo since 2005, and a number of meals and services include the term 'Boca' (eg, Boca pizza and Boca salad). Bocabar has received considerable press coverage through the claimant's extensive advertising and its customers' laudatory reviews in local guides, newspapers and websites. The claimant and its business predecessors also ran a delicatessen called Bocacina from 2003 to 2007 and a restaurant called Bocanova from 2000 to 2008. The goodwill of the restaurant was assigned to Bocacina.

The defendants - Boca Bistro Cafe and the two individuals in charge - operate a rival cafe and bistro three miles away from the Bocabar. The food served is similar to Bocabar's and internet searches for 'Boca Bristol' and 'Boca Restaurant Bristol' trigger the names of both parties. In 2012 the defendants successfully registered the mark BOCA BISTRO CAFE. However, earlier this year, Boca Bistro Cafe ceased trading and is reportedly in the midst of being removed from the register. A new cafe called Bica Bistro Cafe uses the same premises and Facebook account as Boca Bistro Cafe. 

Daniel Alexander QC considered the well-established principles for assessing the elements of passing off, namely goodwill, misrepresentation and damage. Noting that local goodwill - provided it is substantial and not trivial - is sufficient, he held that Bocacina had the requisite goodwill in the mark BOCABAR and, to a lesser degree, BOCA in the restaurant, bar and cafe services, the art gallery and the music venue and any trade by association with the words 'Bocabar' and 'Boca' amongst the purchasing public throughout Bristol and the surrounding area.

Citing the similarity in name, the three-mile proximity of the businesses and the overlap in the food and services offered, the judge found that there was a likelihood that a substantial number of the relevant purchasing public would be confused into thinking that the claimant's and defendants' businesses were the same or commercially linked. The judge noted the differences in bar size, types of food offered and signage and the distance between the two restaurants. However, he found that these factors were insufficient to prevent the purchasing public from wrongly believing that the two restaurants were connected. Furthermore, the claimant also submitted evidence of a number of instances of confusion which the judge found indicative of misrepresentation and a likelihood of a significant number of the purchasing public being confused. The judge reasoned that there was invariably damage and concluded there was a successful claim of passing off. 

The judge also held the defendants' registered trademark BOCA BISTRO CAFE to be invalid on the basis that Section 5(4) of the Trademarks Act 1994 prevents a trademark from being validly registered where there is a finding of passing off.

The judge then considered the impact that the defendants' change of name (from Boca Bistro Cafe to Bica Bistro Cafe) and in management in the summer of 2013 had on the current proceedings. The claimant submitted that the name change was insufficient to avoid a finding of passing off, but reserved its position on the issue and did not amend the particulars of claim. The judge opined that the claimant would not be estopped from bringing a further passing-off action in relation to use of the name Bica Bistro Cafe. In his view, there was neither an abuse of process nor unjust harassment if the claimant waited to see whether the name change caused further problems before commencing additional proceedings. 

The judge ordered an injunction to restrain the defendants from using the signs 'Boca', 'Boca Bistro Cafe', 'Boca Bistro', 'Boca Cafe' or 'Bocabar' for goods, services or any such business and to remove any reference to Boca Bistro Bar or Boca on the defendants' Facebook page. The claimant was also granted permission to cancel the defendants' domain name 'www.bocacafes.co.uk'.

This case illustrates that a businesses with local goodwill can successfully rely on passing off, provided that goodwill is substantial and not trivial. Where there is evidence of confusion in the eyes of the purchasing public over trade source, a court is likely to find a misrepresentation even if there are factors that might suggest a defendant's goods, services or business are, in fact, different from the claimant's.

Désirée Fields, McDermott Will & Emery UK LLP, London