Bocacina v Boca: a costly affair, but who pays for what?

The Intellectual Property Enterprise Court (“IPEC”), which superseded the Patents County Court for England and Wales in 2013, is acclimatising nicely to its new name, though it has been a few months since the first decision to come from the IPEC (Bocacina Ltd v Boca Cafes Ltd [2013] EWHC 3090 (IPEC)) reached the database of the British and Irish Legal Information Institute BAILII: this decision was reported on by Darren Smyth on the IPKat back in October, here.

This Kat is in a particularly reflective and sentimental mood, since the costs decision in this case was published just last week (the costs decision can be read in full on BAILII here). So what was the costs ruling about?

Background

Just to recap, the trial judgment, delivered on 14 October 2013, 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. 

Costs judgment

The “raison d’etre” of the IPEC is to provide a cost-effective alternative to IP litigation. Daniel Alexander QC stated in his judgment that 

‘the object of this court is, however, not only to decide cases more efficiently and cheaply but also to help SMEs resolve disputes without the need for a trial. Quite often, the biggest obstacle to early resolution in such cases is costs….one of the ways in which this court can achieve this aim is to take account of reasonable admissible offers made to settle a case at an early stage of proceedings in determining what costs should be paid, if an action is pressed to trial in the face of such offers.’

It is also worth reminding ourselves that under the Civil Procedure Rules CPR Rule 44.(2)(4), in deciding what order (if any) to make about costs, the court will have regard to all the circumstances, including –

(a) the conduct of all the parties;

(b) whether a party has succeeded on part of its case, even if that party has not been wholly successful; and

(c) any admissible offer to settle made by a party which is drawn to the court’s attention, and which is not an offer to which costs consequences under Part 36 apply.

In this case, the claimant claimed £23,460 worth of costs. Both parties put forth their submissions in relation to costs (although the defendant’s submissions were 21 days late), 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.  In its offer the defendant had proposed 

(1) to change its name to a name which didn’t include the word ‘Boca’,  

(2) that it would not use the name Boca as part of its trading style in Bristol or the surrounding areas, and  

(3) that it would surrender its UK trade mark registration. The defendant had then asked for 9 months to implement these proposals. 

The claimant rejected the proposal, arguing in its skeleton that the offer made no contribution to costs incurred in the case and that, in relation to the timing issue, the defendant ”demanded” a “wholly unreasonable 9 months” in which to re-brand, when all that needed to be done was repaint the signage, reprint menus and update the restaurant websites’. 

Daniel Alexander QC did agree that there was some merit to the claimant’s arguments, but ultimately found that the offer that had been 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’. 

(In the court's assessment, this was 50% of their costs from that date). Additionally the claimant should not have to bear any of the defendant’s costs.’ Some of the factors the court took into consideration included the well reasoned case put forth by the claimant in its Particulars of Claim, the defendant’s 2012 offer, and ‘striking the balance between providing a fair level of recovery of costs for meritorious claimants, while encouraging early resolution of proceedings without a trial.’

The court awarded the final amount of £10,750 in costs to the claimant. In his judgment, Daniel Alexander QC added: 

‘... overall, the sum I am awarding provides a reasonable sum by way of costs to the Claimant (it is about 50% of its total costs ignoring photocopying) but it does not unjustly penalize the Defendant by awarding full costs against it, having regard to their offer’.  

This Kat believes this was a reasonable and fair approach to take and one which was wholly in the spirit of the new remit of the IPEC.