Hotel Cipriani SRL & Ors v Cipriani (Grosvenor Street) Ltd & Ors

A Community trade mark proprietor may obtain protection against use of an identical or similar sign even where its actual trading has occurred principally abroad, provided the statutory conditions are met. The own-name defence is narrowly construed and generally requires use of the defendant’s registered name, not an abbreviated or newly adopted trading name. Use is not in accordance with honest practices where the defendant knew, or ought reasonably to have known, of the earlier mark, failed to address the risk of confusion, and continued conduct likely to cause deception or damage. Bad faith under Article 51(1)(b) of the Community Trade Mark Regulation is a narrow exception aimed at abuse of the registration system, not bona fide conflicts between competing trade mark interests.

The claimants operated hotels and restaurants under the name Cipriani, including Hotel Cipriani in Venice. The first defendant operated a London restaurant commonly known as Cipriani and formally described as Cipriani London. The claimants alleged infringement of a Community trade mark for CIPRIANI, passing off, and liability under section 56 of the Trade Marks Act 1994.

The defendants relied on the own-name defence and counterclaimed that the Community trade mark and a United Kingdom trade mark were invalidly registered in bad faith. They also relied on alleged earlier use by other Cipriani businesses and on the parties’ historical agreements. The central issues were infringement, honest practices, goodwill and misrepresentation, well-known-mark protection, and bad faith.

1. Infringement. The use of CIPRIANI in relation to the London restaurant infringed Article 9(1)(a) of the Community Trade Mark Regulation. The use of CIPRIANI LONDON infringed Article 9(1)(b). On the notional-use approach, normal use of the Community trade mark could extend to a London restaurant. The dominant and distinctive element of the defendant’s sign was CIPRIANI, the services were identical, and confusion was likely.
2. Own-name defence. Article 12(a) was unavailable. Under Asprey & Garrard Ltd v WRA (Guns) Ltd [2001] EWCA Civ 1499 and Premier Luggage & Bags Ltd v Premier Co (UK) Ltd [2002] EWCA Civ 387, the defence did not extend to an abbreviated or adapted trading name. Neither CIPRIANI nor CIPRIANI LONDON was the first defendant’s registered name. The second and third defendants could not rely on another person’s name or on a licensed use.
3. Honest practices. The proviso to Article 12(a) required an objective overall assessment. Relevant factors included knowledge of the earlier mark, the risk of consumer deception, unfair advantage or detriment, actual confusion, the mark’s reputation, and the defendant’s justification. The defendants knew, or ought to have discovered, the Community trade mark, failed to seek clearance, continued using CIPRIANI after objection, and encouraged references to the restaurant as CIPRIANI. Their conduct amounted to unfair competition and was not honest.
4. Validity and bad faith. Article 51(1)(b) was a narrow exception designed to prevent abuse of the Community registration system. It did not apply to a bona fide conflict between competing trade mark rights, or merely because the applicant knew that third parties used identical or similar signs. The claimant had a legitimate interest in registering CIPRIANI, and the counterclaims for invalidity failed. The same conclusion applied to the United Kingdom mark under section 3(6) of the Trade Marks Act 1994.
5. Passing off. The claimant owned United Kingdom goodwill because British customers booked its hotel and restaurants directly from the United Kingdom. The use of CIPRIANI and CIPRIANI LONDON was likely to mislead a substantial number of consumers into believing that the London restaurant was operated by, or connected with, the claimant. Damage followed.
6. Well-known mark. CIPRIANI was well known in the United Kingdom among patrons of luxury international hotels and restaurants. Use of the signs was likely to cause confusion, so the claimant was entitled to an injunction under section 56 of the Trade Marks Act 1994. The counterclaims were dismissed and the second and third defendants were jointly liable with the first defendant.