February 2010
Cipriani London Restaurant Ordered to Change Its Name
The Court of Appeal has upheld an injunction against Mayfair based restaurant Cipriani London prohibiting it from use of the trade mark CIPRIANI and ordering it to change its name after it failed to defend legal action brought by owners of the Hotel Cipriani in Venice.
Though the hotel had been set up by the grandfather of Guiseppe Cipriani, the sole director of the company which owns the majority stake in the Cipriani London restaurant, the Cipriani family had sold all of their interests in the Hotel Cipriani in 1967 along with the exclusive right to use the CIPRIANI trade mark.
The hotel is now owned by Hotel Cipriani S.R.L. which holds trade mark registrations including a Community Trade Mark registration for “CIPRIANI” filed in 1996 and UK trade mark registration for “HOTEL CIPRIANI” dating back to 1988.
Hotel Cipriani S.R.L took legal action against Cipriani London in 2006 for both trade mark infringement and passing off following the Cipriani family’s refusal to change the restaurant’s name.
Upholding the 2008 High Court judgment Lord Justice Lloyd stated that though Hotel Cipriani S.R.L does not carry on any business under the CIPRIANI brand in the UK the business which it does carry on in Venice has an international reputation and therefore the use of CIPRIANI by the restaurant was likely to confuse the UK public into believing that the two entities were connected.
In addition the Court of Appeal held that the restaurant's name was infringing the European Community Trade Mark registration “CIPRIANI” held by Hotel Cipriani S.R.L for hotel and restaurant services. The Cipriani family and in particular Giuseppe Cipriani in turn sought to rely on the own name defence.
Following the ruling of the High Court, the Court of Appeal rejected the own name defence from applying to the circumstances of the case stating that the legal owner i.e. the company through which the Cipriani family operated the restaurant was not named CIPRIANI.
The Cipriani family has stated that they are extremely disappointed with the Court of Appeal’s decision and do not believe that any confusion exists with the Hotel Cipriani in Venice which has no operations in the UK. They are now considering an appeal to the Supreme Court whilst also exploring other names for the restaurant.
BRIFFA Comment
The Court of Appeal judgment provides some valuable guidance into complex areas of UK and European trade mark law and highlights the effectiveness and strength of brand protection offered by trade mark registration.
It is in particular a good illustration of the added scope of protection available to brands that have a significant degree of reputation attached to them. Based on evidence presented of a substantial number of direct bookings being made with the Hotel Cipriani from members of the UK public it was held that the hotel had built up a high level of reputation and goodwill in the CIPRIANI trade mark in the UK even though it had not been carrying on any business in any premises under such brand there. It could therefore rely on such reputation to prevent others from using the CIPRIANI trade mark in the UK even though it had not been using it there itself.
In relation to the own name defence which the Cipriani family attempted to rely on against the trade mark infringement claims it was ruled by both the High Court and Court of Appeal that they could not rely on such defence as the legal owner i.e. the company which they operated the restaurant through was not named CIPRIANI.
The registered name of the company which operates the restaurant is actually CIPRIANI (GROSVENOR STREET) LTD. The Cipriani family argued that the company was trading under the name CIPRIANI LONDON and should therefore be able rely on the own name defence in relation to its trading name. Though the Court of Appeal judges accepted that a company could rely on a trading name for the own name defence (if it had become known by such name) as the company on the current facts had chosen to use a trading name that infringed an existing Community Trade Mark registration “CIPRIANI” it could not rely on the own name defence to avail itself from liability for trade mark infringement in such circumstances.
For more information on trade mark registration and enforcement and scope of the own name defence please do not hesitate to get into contact with one of our lawyers via INFO.