Bocacina Ltd v Boca Cafes Ltd
This case involved a successful passing off claim by the claimant, who owned a restaurant/café in Bristol called ‘Bocabar’, against the defendant who opened up another café called ‘Boca Bistro Café’ in close proximity to the claimant’s restaurant.
The court held that a significant number of members of the public would be likely to be confused into believing that the two cafes were connected, given their close proximity and the common use of the word ‘Boca’ in their respective names. Accordingly, a successful claim for passing off was established, and the defendant’s registration for the word mark ‘Boca Bistro Café’ was held to be invalid.
What is particularly note worthy from this decision is the thought process behind the award of costs. The remit of the Intellectual Property Enterprise Court (IPEC) is to prove cost effective alternatives to full litigation, specifically with Small and Medium Enterprise's (SMEs) in mind. Any award of costs must have regard to all the surrounding circumstances, including the conduct of the parties, the success or partial success of the claim and any settlement offers made which can be brought to the court’s attention.
In this case, the claimant claimed £23,460 worth of costs. Both parties put forth their submissions in relation to costs and the defendant asked the court to pay particular attention to an offer that was put forward in December 2012, just after the Particulars of Claim were served. The offer consisted of the proposal to change its name to a name which didn’t include the word ‘Boca’, to cease use of ‘Boca’ in Bristol and the surrounding areas, and to surrender its UK trade mark registration. The defendant had then asked for nine months to effect these changes.
The claimant rejected the proposal, arguing that the offer made no contribution to costs and the requested nine-month period was too long, given the changes would essentially be restricted to the front facia and menus and thus easily implemented.
In considering what order to make in the absence of an offer which included costs, the position of the parties was summarised as follows by Mr Alexander QC:
"On the one hand a successful claimant can say with justification that it has been forced to go to trial to vindicate their rights and recover its costs. On the other hand, a defendant can say that there was no justification in going to trial in the face of an offer to provide substantive relief and the case was only really (from that point on) only about a modest amount of costs."
"It is important for this court to be careful not to encourage disputes to continue which are, in essence, only about costs, where one side or the other has essentially given in. SMEs should be encouraged to concede points early, if they do not have a good case and to do so early."
The Court considered that the Claimant had not substantially "beaten" the terms of the Defendants' offer and the trial had largely been about the recovery of costs. The Court was keen to ensure that there was a reduced incentive for a claimant to press on to trial after an offer had been made, for substantially all of the relief sought, at an early stage. However, the Court emphasised that defendants should make a reasonable offer of costs at an early stage if they are giving in and not "to put their heads in the sand".
In its final decision, the court stated that the approach it should take would be for the claimant to have “(1) 100% its costs relatively generously assessed (by IPEC standards) down to the date of the defendant’s offer in December 2012, (2) a reasonable proportion of its costs, but not all of them, after the date of that offer.”
The result was therefore that the court awarded a final amount of £10,750 in costs to the claimant. This was thought to be a “reasonable sum” which duly took account of the defendant’s attempt to settle the matter. It is interesting to note that the amount of costs that the claimant is said to have incurred prior to issuing proceedings was only around £6k. Bearing in mind that the claimant actually incurred some £23k in costs and was awarded only around £11k of costs this meant that the claimant had to absorb £12k of costs – twice what was at dispute at the outset!
The thought process behind the costs award is reflective of the past history between the parties and should be seen as enacting the principles of the IPEC's remit, resulting in a considered and balanced cost award.
This case highlights IPEC's active case management, use of preliminary non binding opinions and approach to costs generally. All of these measures assist in achieving an effective resolution of IP disputes in Court with the benefit of capped costs exposure.
It is important for litigants (and indeed potential litigants) to thoroughly investigate all avenues of settlement of a matter prior to issuing proceedings. This judgment shows that issuing proceedings purely to recover costs is ill-advised but that equally potential defendants should look to make reasonable offers as to costs in order to avoid the need for proceedings. If either side seeks to "put their heads in the sand" regarding costs then they can expect the court to take a dim view of such actions.