First Decision by an Enterprise Judge to hit BAILII - IPEC in Action!

Something is going very wrong with the universe, because your humble moggy almost never gets excited about trade mark cases sufficiently to blog about them, and yet here, lo and behold, he is posting twice in a row about trade mark matters, first from Korea, and now from the fresh, new and exciting Intellectual Property Enterprise Court.

The launch of IPEC was discussed by the blogmeister on the IPKat.  The name has attracted much comment.  Mr Justice Birss entertained the assembled multitudes at the CIPA President's dinner on 3 October, just two days after the new court sprang into existence, explaining how the new name had been chosen, and speculating on the names that had been considered and discarded (best of all, the "IPKat Court").  But this Kat had not previously noticed that the judge of the freshly minted court was going to be called an Enterprise Judge!  Does that not sound wondrous to the ear.  This Kat will refrain from the obvious puns and visual metaphors in order to avoid lynching by his colleagues.

The unfortunate timing of the change in status and name of the PCC to the IPEC after the elevation of Mr Justice Birss (as he now is) to the High Court but before the appointment of his successor means that there is as yet no full time Enterprise Judge.  So for this auspicious judgment Mr Daniel Alexander QC has stepped up to hear the matter.  The case is Bocacina Ltd v Boca Cafes Ltd [2013] EWHC 3090 (IPEC) (14 October 2013) and you can read the judgment in full on BAILII here.  (Note also the new neutral citation system to be applied in such cases.)

It is typical PCC, sorry, IPEC, stuff: a passing off matter, with the defendants represented by the second defendant (Dercio de Souza Junior) in person and having filed no skeleton argument or evidence and indeed not being present when the case was called on, but only appearing after a delay of a few hours.  The question was whether 'the defendants who, until recently, operated a restaurant and bar in Bristol under the name "Boca Bistro Café" are liable for passing off, having regard to the claimant's earlier use of the mark "Bocabar" for an earlier bar and restaurant in Bristol and "Boca" for some of the goods and services provided there'.  The answer, turning very much on geographical proximity it seems, was "yes", and the defendants' UK trade mark registration no. 2594410 was consequently declared invalid.

In an interesting procedural point illustrating the flexibility of the PCC (now IPEC) HH Judge Birss QC (as he then was) had previously in April 2013 given a preliminary non-binding indication that the defendants' defence was not meritorious and that the claim was likely to succeed. In the event, that is what happened.