Bocacina Ltd v (Boca Cafes Ltd (Rev 1)

Passing off requires goodwill or reputation, a defendant’s misrepresentation, and actual or likely damage. Goodwill need not be extensive, but it must be more than trivial. The court may form its own view of likely deception in ordinary consumer cases, while asking whether a substantial number of the relevant public would be deceived. Most consumers need not be confused.

Similarity of names, geographical proximity and similarity of goods or services may establish a likelihood of confusion that businesses are connected. Company, domain-name or trade-mark registration does not of itself prevent a passing-off claim. Where passing off is established on Trade Marks Act 1994 section 5(4) grounds, a conflicting registration may be declared invalid.

The claimant operated a successful Bristol bar, restaurant, gallery and music venue under the names Bocabar and Boca. The defendants operated a nearby Bristol café and bistro called Boca Bistro Café and owned a corresponding trade-mark registration.

The claimant alleged passing off and sought invalidation of the registration. The court considered whether the claimant had protectable goodwill, whether the defendants’ use was likely to cause a substantial number of people to believe that the businesses were connected, and whether the registration was invalid under section 5(4) of the Trade Marks Act 1994.

1. Passing off. The court applied the established three elements: goodwill or reputation attached to a distinguishing feature, misrepresentation leading or likely to lead the public to believe that the defendant’s goods or services were those of the claimant or an associated business, and actual or likely damage.
2. Goodwill. Goodwill may exist on a relatively small geographical scale, provided it is more than trivial. The claimant had substantial goodwill in Bristol and the surrounding area in relation to its bar, restaurant, café, gallery and music-venue services, associated with Bocabar and, to a lesser extent, Boca.
3. Misrepresentation. In an ordinary consumer case the court may form its own view of likely deception without evidence from witnesses who experienced confusion. The relevant question is whether a substantial number of the relevant public would be deceived; it is unnecessary that most people should be confused. The similarity of the names, proximity of the businesses and similarity of their food and services created a significant likelihood that customers would believe that the businesses were connected. Evidence of actual confusion supported that conclusion.
4. The defendants’ differences in décor, menu, geographical position and customer experience did not remove the likelihood of confusion. Their use amounted to passing off, and damage followed from the established goodwill and misrepresentation.
5. Trade-mark registration. Since the defendants’ conduct constituted passing off and was an example of normal and fair use of the mark, registration no. 2594410 was invalid under section 5(4) of the Trade Marks Act 1994 and was to be declared invalid.
6. Registration of a company name, domain name or trade mark does not protect conduct that otherwise constitutes passing off. The claimant sought no general monopoly in Boca or Bocabar. The complaint concerned the defendants’ specific use of Boca Bistro Café in Bristol.
7. In the particular circumstances, it was not an abuse of process for the claimant to wait and see whether the subsequently adopted Bica mark caused significant confusion before bringing further proceedings. The court considered that approach consistent with the overriding objective and proportionate dispute resolution for small and medium-sized enterprises.

This was a first-instance decision. No appellate history is stated in the judgment.