Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2010] EWCA Civ 110
This hearing took place in the UK Court of Appeal.
The Appellant was seeking to overturn a finding that it had infringed the UK and Community Trade Mark rights of the Respondent in the word CIPRIANI, and was guilty of passing-off in respect of the same name.
The word was registered in respect of goods and services including hotels, restaurants, bars and catering. It was obtained by the Respondent after it had purchased a hotel business of international reputation in Italy.
The Appellant was run by a member of the Cipriani family in Italy that had originally sold the hotel business to the Respondent. It operated a restaurant in London under the names CIPRIANI LONDON and CIPRIANI.
The original trial judge (whose decision was now being appealed) found that the use of the name CIPRIANI by the Appellant was likely to confuse the public into thinking that its restaurant was associated with the Respondent. As the Appellant did not have unregistered trademark rights in the UK, this amounted to infringement of the Respondent’s CTM and significant reputation. An injunction had been awarded to prevent the Appellant from continuing to use the name.
Before the Court of Appeal, the Appellant first claimed that the CTM of the Respondent was invalid because it had been registered in bad faith. In particular, it alleged that the mark had been registered with the intention of preventing the Cipriani family from making use of it in trade.
This claim was rejected because at the time that it was registered, the CIPRIANI name was only being used by the Respondent in respect of hotels and restaurants. As there were no rights held by any other party in the name at the relevant time, the registration had not been made with the intention of preventing its use by those with a competing claim.
The Appellant’s second argument was that it was entitled to rely on the ‘own name defence.’ This allows a company to use its registered name or trade name, even if that name is the same as a registered trademark, provided that such use is considered by the judge to be in accordance with honest practices.
The Court accepted that a company is not restricted to using its corporate name if it has an established trade name. Whether a party could rely on the ‘own name defence’ would depend upon the circumstances of each case, such as the name adopted and circumstances in which it had been adopted.
The argument was rejected in this case because the Appellant’s trade name (if any) was CIPRIANI LONDON. It was not entitled to use the abbreviation CIPRIANI in the same way. Even if it had been so entitled it was arguable that the use of both trade names amounted to unfair competition and the defence could not apply in any event.
The Appellant’s final argument was that a claim for passing-off could not be maintained, because the Cipriani family had concurrent unregistered rights in the name.
The Court found that the question of a foreign business establishing a reputation in the UK (necessary to claim unregistered UK trade mark rights) comes down to whether it has consumers in the UK looking to purchase its goods or services.
The argument was rejected in this case because whilst the Respondent had a substantial body of potential consumers in the UK, the same could not be said of the Appellant. The Cipriani family group enjoyed no worthwhile custom in the UK as a result of the name.
The Court of Appeal dismissed the appeal and the injunction was upheld.