Battle of the Bristol cafés – just award of costs

The Intellectual Property Enterprise Court (IPEC), formerly known as the Patents County Court for England and Wales until its change of name in 2013, issued its first decision since the name change in the case of  Bocacina Ltd v Boca Cafes Ltd.

The 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, however, is the thought process behind the award of costs.  The remit of the IPEC is to prove cost effective alternatives to full litigation, specifically with 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 in its skeleton arguments 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.

The court did agree that there was some merit to the claimant’s arguments, but ultimately found that the offer made by the defendant was not materially worse than the sums which the claimant eventually received in the first judgment.  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.

The thought process behind the costs award is reflective of the past history between the parties and must surely be seen as enacting the principles of the IPEC’s remit, resulting in a considered and balanced cost award.

If you have any contentious IP matters where you are considering taking action and where the benefits of the common sense and low cost approach of the IPEC might be attractive, please ask your usual Barker Brettell attorney for more advice.