The claimant alleged passing off by the defendant’s use of the name ‘Boca Bistro Cafe’, and subsequently ‘Bica Bistro Cafe’
Held: Where the defendant had changed its trading style during the proceedings it was possible, if the claimant believed that confusion remained, for the claimant to alter his claim to include the new trading style. It was preferable to have the issues dealt with in one set of proceedings.
As to the passing off: ‘at least in a case involving ordinary consumer products or services, the court can form its own view as to whether there is a likelihood of misrepresentation, without the need for there to be actual witness of confusion. Second, the court must consider whether there is a substantial number of people who were or would be deceived by the defendant’s use of the mark, even if there are many, or even most, who would not be deceived.’ In this case the claimant had established a goodwill in the name in the area, and there was a real risk of confusion in the defendant’s trading style. The evidence of confusion was limited, but sufficient and the claim succeeded,
Daniel Alexander QC
 EWHC 3090 (IPEC)
England and Wales
Cited – Henderson v Henderson 20-Jul-1843
Abuse of Process and Re-litigation
The court set down the principles to be applied in abuse of process cases, where a matter was raised again which should have been dealt with in earlier proceedings.
Sir James Wigram VC said: ‘In trying this question I believe I state the rule . .
Cited – Reckitt and Coleman Properties Ltd v Borden Inc HL 1990
The plaintiffs claimed passing off of their ‘Jif Lemon’ trading style.
Held: It is no defence to an allegation of passing off that members of the public would not be misled if they were more literate, careful, perspicacious, wary or prudent. . .
Cited – Wagamama v City Centre Restaurants plc ChD 1995
The plaintiff claimed in both trade mark infringement and passing off. The defendant had opened a restaurant called ‘Rajamama’ or ‘Raja Mama’s’, which was said to amount to infringement of the claimant’s mark WAGAMAMA and also to amount to passing . .
Cited – Neutrogena Coroporation v Golden Ltd ChD 1996
Jacob J discussed the value of survey evidence in passing off cases: ‘Unless one can have some real evidence, tested in cross examination, one cannot really be sure of what was passing through peoples minds. Those cases where surveys have proved to . .
Cited – Neutrogena Coroporation v Golden Ltd CA 1996
The court discussd the ‘substantial proportion of the public’ test applied in passing off. The purpose of this evidence was to provide real evidence from ordinary members of the public wholly untainted by any artificiality. . .
Cited – Johnson v Gore Wood and Co HL 14-Dec-2000
Shareholder May Sue for Additional Personal Losses
A company brought a claim of negligence against its solicitors, and, after that claim was settled, the company’s owner brought a separate claim in respect of the same subject-matter.
Held: It need not be an abuse of the court for a shareholder . .
Cited – Knight v Beyond Properties Pty Ltd and others ChD 24-May-2007
Action for passing off, in which the claimant sought damages and injunctive relief. David Richards J said: ‘A reputation on a relatively small scale will still attract the protection of a claim in passing off, but at some point the reputation may . .
Cited – Nokia Gmbh v IPCom Gmbh and Co Kg CA 20-Jan-2011
The respondent’s two patents at issue had been found invalid, but that if valid, that the appellant’s mobile phones woud have infrige the patents.
Held: Jacob LJ said that ‘It is not normally procedurally fair to subject the other side to . .
Cited – Marks and Spencer Plc v Interflora Inc and Another CA 20-Nov-2012
The court gave guidance on the use of surveys in trials for passing off and trade mark infringement.
Lewison LJ reviewed the practice of conducting interviews and surveys in passing off cases: ‘The upshot of this review is that courts have . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Litigation Practice
Updated: 01 November 2021; Ref: scu.516494