“The underlying public interest is the same: that there should be finality in litigation and that a party should not be twice vexed in the same matter. This public interest is reinforced by the current emphasis on efficiency and economy in the conduct of litigation, in the interests of the parties and the public as a whole. The bringing of a claim or the raising of a defence in later proceedings may, without more, amount to abuse if the court is satisfied (the onus being on the party alleging abuse) that the claim or defence should have been raised in the earlier proceedings if it was to be raised at all. I would not accept that it is necessary, before abuse may be found, to identify any additional element such as a collateral attack on a previous decision or some dishonesty, but where those elements are present the later proceedings will be much more obviously abusive, and there will rarely be a finding of abuse unless the later proceeding involves what the court regards as unjust harassment of a party. It is, however, wrong to hold that because a matter could have been raised in early proceedings it should have been, so as to render the raising of it in later proceedings necessarily abusive. That is to adopt too dogmatic an approach to what should in my opinion be a broad, merits-based judgment which takes account of the public and private interests involved and also takes account of all the facts of the case, focusing attention on the crucial question whether, in all the circumstances, a party is misusing or abusing the process of the court by seeking to raise before it the issue which could have been raised before. In intellectual property cases, the maxim “business needs to know where it stands” is of great importance. In general, if there are complaints about current conduct, they should all be dealt with together and not piecemeal (see e.g per Jacob LJ in Nokia GmbH v IPCOM GmbH & Co KG[2011] EWCA Civ 6 : “It is not normally procedurally fair to subject the other side to successive cases when you could readily have put them all in one go”). However, it does not seem to be an abuse of process in the specific context of this passing off dispute between two SMEs for the claimant to wait and see whether a mark altered by a defendants during the course of proceedings (if it is them or one of them) is actually causing problems before pressing further action in respect of it, instead of amending this action to deal with it now. It would not accord with the overriding objective of this court, which is to assist SMEs in resolving their disputes at low cost, to force these particular litigants into unnecessary and procedurally costly fights as a result of an over-zealous application of rules designed to stop abuses usually involving unjust harassment by repeated litigation in quite different circumstances. It is not primafacie unjust harassment for a claimant who has resolved the main issue and the mark has been changed by the defendant to say “let’s wait and see if there is a problem with the new mark, before having a costly further dispute on a point which may never arise” rather than “let’s fight about it now, although there might be no problem”, even if that leaves a defendant in some state of uncertainty as to whether it will be vulnerable to further proceedings in the future. If a defendant in those circumstances is particularly concerned about immediate certainty, it is possible to obtain declaratory relief that conduct is permissible, where a claimant has asserted that it is not or might not be, or to resist the point being held over. In this case, no objection was suggested to that latter course, perhaps because the second defendant’s position was that the Bica Bistro Café was nothing to do with him or the defendants at all. Law Returning to the claim as formulated, the principles of the law of passing off which equally apply in a case concerning a challenge to the registration of a trade mark on section 5(4) grounds are uncontroversial.They were set out in the Particulars of Claim and may be summarized in the words of Halsbury’s Laws as follows: “The necessary elements of the action for passing off have been restated by the House of Lords as being three in number: (1) that the plaintiffs goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature; (2) that there is 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 plaintiff; and (3) that the plaintiff has suffered to is likely to suffer damage as a result of the erroneous belief engendered by the defendant's misrepresentation.” (1) that the plaintiffs goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature; (2) that there is 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 plaintiff; and (3) that the plaintiff has suffered to is likely to suffer damage as a result of the erroneous belief engendered by the defendant's misrepresentation.”
“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 exist among such a small group of people that it will not do so. The minimum size of goodwill required for this purpose is a matter of fact and degree. A claim in passing off cannot be sustained to protect goodwill which any reasonable person would consider to be trivial: Sutherland v V2 Music Ltd [2002] EMLR 568 at para 22 per Laddie J”
“...is it on the balance of probabilities, likely that, if the appellants are not restrained as they have been, a substantial number of members of the public will be misled into purchasing the defendants’ [product] in the belief that it is the respondents’ product?”
“...if the judge’s own opinion is that the case is marginal, one where he cannot be sure whether there is a likelihood of sufficient deception, the case will fail in the absence of enough evidence of the likelihood of deception. But if that opinion of the judge is supplemented by such evidence then it will succeed.”
"It is not a defence to passing off that many of a defendant's sales do not cause deception or confusion. There is passing off even if most of the people are not fooled most of the time but enough are for enough of the time. By "enough"
"…the plaintiffs have managed to adduce what I find to be convincing evidence that there is deception and confusion and that this is above a trivial level, even though most people are not deceived." (Emphasis added)
“fast become the hippest haunt of both local residents and those in the know from further afield.”