Bocacina Ltd v (Boca Cafes Ltd (Rev 1) [2013] EWHC 3090 (IPEC) (14 October 2013)

Bocacina Ltd v (Boca Cafes Ltd (Rev 1) [2013] EWHC 3090 (IPEC) (14 October 2013)

The claimant had substantial local goodwill in 'Bocabar' and 'Boca'; the defendants' use of similar names for a similar business in close proximity was likely to cause confusion and misrepresentation; therefore, passing off was established and the defendants' trade mark registration was invalid.

Citation
[2013] EWHC 3090 (IPEC)
Parties
Claimant: Bocacina Limited; Defendant: Boca Cafes Limited; Defendant: Dercio De Souza Junior; Defendant: Malgorzata De Souza
Jurisdiction
England and Wales
Judgment Date
14 October 2013
Procedural Posture
Passing Off and Trade Mark Invalidation / Judgment After Trial
Outcome
Claim for passing off and trade mark invalidation succeeded.
Legal Topics
Passing Off, Trade Mark Invalidation, Goodwill, Misrepresentation, Injunctions
Intellectual Property Commercial Law Passing Off Trade Mark Invalidation Goodwill Misrepresentation Injunctions

Case Brief

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Parties

Bocacina Limited

Claimant

Boca Cafes Limited

Defendant

Dercio De Souza Junior

Defendant

Malgorzata De Souza

Defendant

Procedural Posture

Passing Off and Trade Mark Invalidation / Judgment After Trial

Legal Issues

  1. 1 Whether goodwill or reputation attaches to the claimant's goods or services by association with 'Bocabar' or 'Boca' and its extent
  2. 2 Whether the defendants misrepresented to the public or trade that their business or goods/services are those of the claimant or connected with it
  3. 3 Whether the defendants' UK trade mark registration no. 2594410 should be declared invalid

Ratio Decidendi

The claimant had substantial local goodwill in 'Bocabar' and 'Boca'; the defendants' use of similar names for a similar business in close proximity was likely to cause confusion and misrepresentation; therefore, passing off was established and the defendants' trade mark registration was invalid.

Court Disposition

Claim for passing off and trade mark invalidation succeeded.

Orders

  • Injunction restraining defendants from passing off using 'Boca', 'Boca Bistro Cafe', 'Boca Bistro', 'Boca Cafe', or 'Bocabar' in relation to business, goods or services.
  • Declaration of invalidity of UK trade mark registration no. 2594410.