Thursday, 4 September 2014

What has intellectual property got to do with Grantham?


There are a lot of businesses in Grantham and they all have signs that distinguish them from their competitors. Most of those signs consists of names or logos but the sign for the The Beehive inn in Castlegate is actually a swarm of bees. It is those bees that distinguish The Beehive in the minds of its customers from all other pubs in Grantham and indeed the rest of the world.  The Beehive's regulars would no doubt find their way to the pub if the bees went away but those such as I who are not quite so familiar with Castlegate look out for the hive. It is that hive that draws us to that pub and once inside the pub we spend our money. 

The tendency of customers to frequent a business is called goodwill.  At least some of that goodwill is associated with the hive. The hive is therefore an asset in that it generates revenue for the pub. We class it as an intellectual asset because it is the product of the mind rather than a plot of land or item of machinery. The rights to those assets are known as intellectual property.

An example of how the law protects a sign arose in Bocacina Ltd v Boca Cafes Ltd. and Others [2013] EWHC 3090 (IPEC). In that case the claimant owned a successful and trendy bar, restaurant and gallery in Bristol known as Bocabar which was sometimes abbreviated to Boca.  Its annual turnover was around £1 million per year. It had a website under the domain name and it advertised in the local press and through flyers and point of sale literature. The establishment had been featured in several guides to Bristol and restaurant reviews.

The defendants set up an eatery known as Boca Bistro Café which offered similar food and entertainment some three miles away. They registered BOCA BISTRO CAFE as a trade mark in respect of cafeteria and restaurant services in class 43 and the domain name which showed up in  close proximity to the claimant's on internet searches.

The claimant sued the defendant in the Intellectual Property Enterprise Court which specializes in resolving intellectual property disputes between small and medium enterprises. The claimant claimed an order from the court known as an injunction to stop the defendants from running a business called Boca, Bocabar or anything similar. An injunction comes with a stern warning from the judge that anyone breaching the order will be fined, sent to prison or punished in some other way. The claimant also claimed orders invalidating the defendant's trade mark and cancelling its domain name registrations and damages or compensation for any loss or damage it had suffered.

In order to win the claimant has to prove that:
  1. its goods or services had acquired a goodwill or reputation in the market and are known by some distinguishing feature;
  2. there had been a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant; and
  3. the claimant had suffered to was likely to suffer damage as a result of the erroneous belief engendered by the defendant's misrepresentation.
The claimant succeeded. The judge held that the Bocabar had acquired a goodwill or reputation in Bristol by reference to its name Bocabar and abbreviations such as Boca. By calling their establishment Boca Bistro Bar and setting up a website under the domain name the defendants had misrepresented a connection with the Bocabar. They had thereby attracted business for their eatery from customers who would otherwise have gone to the Bocabar.

Could such a case occur in Grantham? Sure it could. Not with The Beehive, of course, but perhaps with other businesses. The rules that I mentioned above are not confined to firms in the catering trade but apply to all industries.

Now if you want to learn more about the laws that stop folk naming their businesses or adopting other signs that are likely to be confused with the signs used by other businesses you will just have to come to my talk at Grantham College on the 26 September 2014 at 14:00 (see "Our contribution to Grantham's Gravity Fields Science Festival: IP Workshop and Clinic" 3 Sept 2014). If you have a specific issue of passing off you can have a free 30 minute consultation with me afterwards.  If you want to register a trade mark or indeed oppose or invalidate someone else's registration you can have a word with Mr Keith Loven of LovenIP in Lincoln.  Of course, if you have a pressing problem you don't have to wait quite that long. You can call me on 020 7404 5252 during office hours or message me through my contact form any time.

I look forward to seeing you on the 26 Sept.

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