15 October 2013Trademarks

Newly named UK court issues first judgement

The Intellectual Property Enterprise Court, formerly the Patents County Court, has issued the first judgement under a new name following its re-branding at the start of the month.

On October 1, the court was renamed in a bid by the UK Government to make its services clearer to the public.

At the time, the UK’s IP Minister, Lord Younger, said the change would “re-energise” the court, adding that it would it make it easier for businesses to understand and navigate the IP courts should a dispute occur.

The ruling, published on October 14, centred on a passing off dispute involving the use of the word ‘Boca’ to describe a restaurant and its events.

The claimant in the case was a Bristol-based company called Bocacina, which runs a restaurant called Bocabar and owns a trademark for the word Boca.

Bocacina said the defendant, which owns a separate restaurant called Boca Bistro Café, was liable for infringement due to the use of the word Boca. The defendant owned a trademark for Boca Bistro Café.

According to the court judgement, the word ‘Boca’ is commonly referred to in relation to Bocabar, which also hosts a series of themed nights and special offers using the Boca trademark as a prefix.

Sitting as a newly-titled Enterprise Judge, Daniel Alexander QC ruled that there had been instances of confusion between the two names and that Internet searches for Boca Bristol gave results for both parties.

“During 2012 several people appear to have thought that the Boca Bistro Café was connected to Bocabar,” Alexander wrote.

“Although it is not possible reliably to quantify what proportion of the relevant public is likely to be confused … it is likely to be a significant number.”

The judgement added that the defendant had “misrepresented” to the public or trade that its business or goods or services “are those of the claimant or someone connected with it.”

Boca Bistro Café’s trademark, UK No 2594410, was declared invalid.

One of the main reasons outlined for the court's name change was to indicate that the court covered all aspects of IP and was not restricted to patent cases.

“After the fanfare of the name change, it’s great to see the first judgment of the newly constituted IPEC, and appropriate that it’s a passing off case,” said David Stone, partner in the London office of Simmons & Simmons LLP.

“This demonstrates the broad jurisdiction of the court – not just patents, but trademarks, registered and unregistered designs, copyright and passing off.

“The new name properly reflects the IPEC’s cost effective alternative to IP litigation elsewhere in the High Court - and the Small Claims Track for cases under £10,000 is an even cheaper option still (although patents, and, sadly, registered designs are excluded from the Small Claims Track).

“The IPEC is a designated Community Design Court and Community Trademark Court, able to grant pan-EU injunctions, so the new name also says clearly to business, and particularly business across Europe, that England & Wales has a low cost, speedy, specialist IP court.”

“We will all get used to the new name in due course,” Stone added.

The IPEC is yet to find a replacement for former judge Colin Birss, who was appointed as a justice in the England & Wales High Court in May this year.

According to Gwilym Roberts, partner at Kilburn & Strode in London, the court was already a success under its former name.

Roberts, who said the court “came into its own” under the guidance of Birss, added, “it was in recognition of this that the court is being promoted even more strongly.

“The rename indicates the continuing effort to modernise, to send out the right messages and to represent the full spectrum of work it does.

“IP is all about creativity, and it is apt that within the legal framework surrounding IP we’re now seeing similar levels of innovation.  We’re encountering modernisation across the board in the legal system and it’s a matter of pride for IP practitioners to find ourselves at the cutting edge.”

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1 October 2013   As of October 1, the UK Patents County Court will be known as the Intellectual Property Enterprise Court and will sit within the Chancery Division of the High Court in London.