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Hotel Cipriani succeeds in latest round of trade mark litigation

Background

In December 2008 the High Court gave judgment for the Hotel Cipriani in Venice, owned by Orient-Express Hotels Limited, in its claim for trade mark infringement and passing off in respect of the CIPRIANI mark for restaurant services, against the operators of the CIPRIANI LONDON restaurant. The High Court also granted an injunction to prohibit infringement of the CIPRIANI mark, passing off any restaurant business not connected with the Hotel Cipriani by use of the name “Cipriani” as well as the use of the mark CIPRIANI or any other mark which was confusingly similar to CIPRIANI in relation to restaurant services.

The defendants’ appeal against that judgment was dismissed by the Court of Appeal in February 2010. The defendants included Giuseppe Cipriani (Giuseppe) and a company of which he was a director, Cipriani (Grosvenor) Ltd. That company had subsequently changed its name to Fred 250 Ltd (Fred 250).

Fred 250 dropped the name Cipriani from its two London restaurants, C London and Downtown Mayfair. The logo of the first said “Managed by Giuseppe Cipriani”; the logo of the second said “by G. Cipriani”.

The declarations sought
The Hotel Cipriani sought a declaration that the use of the words “Managed by Giuseppe Cipriani” and “by G. Cipriani” constituted a breach of the injunction.

Submissions

The Hotel Cipriani submitted that the use of the signs objected to created a likelihood of confusion. Giuseppe denied this, maintaining that he was well-known as a restaurant proprietor and manager and that the two restaurants were clearly identified by names that would not be confused with the Hotel Cipriani. He also argued that, even if there was a potential likelihood of confusion, there was no infringement by virtue of Article 12(a) or 12(b) of the Community Trade Mark Regulation.

Article 12 states that “A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade (a) his own name or address; (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service… provided he uses them in accordance with honest practices in industrial or commercial matters”.

Judgment

The High Court had no difficulty in granting the declarations, for the reasons that it had found in favour of the Hotel Cipriani back in 2008. The use of the signs “G. Cipriani” and “Giuseppe Cipriani”, in the context of their respective logos, would give rise to a likelihood of confusion – “the average consumer would think that the services denoted by the trade mark and the signs came from the same or economically-linked undertakings”.

The court gave equally short shrift to Giuseppe’s arguments based on Article 12. The court rejected the argument that Giuseppe was well-known to the relevant average consumer (rather, the use of the name “Cipriani” would give rise to a likelihood of confusion) and the average consumer would not understand the statement “by G. Cipriani” as denoting the quality or characteristics of the services in question. Further, the use of the signs amounted to unfair competition with the Hotel Cipriani and had not been made in accordance with honest practices in industrial and commercial matters.

Finally, the court found that the use of the marks constituted the use of confusingly similar trade marks within the meaning of section 56 of the Trade Marks Act 1994, dealing with well-known marks. The Court of Appeal judgment had confirmed that the Hotel’s CIPRIANI brand was a well-known mark under international law. There is no “own name” defence to section 56.

WM comment

Walker Morris acted for the Hotel Cipriani in these proceedings as it did in the initial High Court claim and subsequently before the Court of Appeal. We discussed the significance of the earlier Court of Appeal’s decision in an earlier article, Well-known Trade Marks.