Hotel Cipriani Srl & Ors v Fred 250 Ltd & Ors (Rev 1)

An injunction prohibiting trade mark infringement and passing off must be applied by reference to findings conclusively established in the earlier proceedings. The parties are bound by issue estoppels and cannot reopen those findings, although the court may make further findings necessary to determine whether later conduct falls within the injunction.

Use of a person’s name in restaurant branding may indicate the origin of the services, even where the name is presented as identifying a chef, proprietor or manager. Such use may infringe a registered mark, constitute passing off and fall outside the honest-practices defence where it creates a likelihood of confusion. A global website is not necessarily targeted at UK consumers; the assessment depends on its content and presentation.

The applications arose from an earlier trade mark and passing-off action concerning the use of Cipriani by the defendants. The earlier injunction, which had been stayed pending appeal, came into force after the Court of Appeal dismissed the defendants’ appeal: [2010] EWCA Civ 110.

Hotel Cipriani sought declarations that use of “by G. Cipriani” in restaurant logos and the historic and current group websites breached the injunction. Giuseppe Cipriani sought declarations that proposed use of “Giuseppe Cipriani” in related logos would not breach it. The central issues were whether the signs infringed the Community trade mark, whether any statutory or honest-practices defence applied, whether the conduct amounted to passing off, and whether the websites were targeted at UK consumers.

1. The applications were properly brought in the existing proceedings. The court had inherent jurisdiction to grant declarations where there was a real commercial reason for seeking them, applying Nokia Corp v InterDigital Corp [2006] EWCA Civ 1618.

2. The effect of the injunction was determined by applying the findings in the first-instance judgment as upheld on appeal. Those findings were res judicata. The defendants were therefore bound by issue estoppels concerning matters including the validity and distinctiveness of the trade mark and the claimant’s goodwill. The court rejected any contrary suggestion in Chelsea Man plc v Chelsea Girl Ltd [1988] FSR 217, while distinguishing the position on an interim injunction.

3. Applying the Article 9(1)(b) principles set out in Red Bull GmbH v Sun Mark Ltd [2012] EWHC 1929 (Ch), the signs “G. Cipriani” and “Giuseppe Cipriani” contained the whole of the registered mark with an added initial or first name. In the context of the logos and identical restaurant services, they conveyed information about the origin of the services and created a likelihood of confusion. The absence of evidence of actual confusion was immaterial.

4. Article 12(a) did not provide a defence. Giuseppe was not trading or making the use complained of, and neither proposed sign was the trading name of Fred or Downtown Mayfair. Article 12(b) also did not apply: the signs indicated the chef, proprietor or manager and therefore origin, rather than the quality or other characteristics of the services.

5. Reconsidering honest practices in accordance with Samuel Smith Old Brewery (Tadcaster) v Lee [2011] EWHC 1879 (Ch), the court concluded that the actual and proposed uses amounted to unfair competition. The defendants knew of the mark and its reputation, used the signs as restaurant branding, should have appreciated the likelihood of confusion, and had no sufficient justification for causing it.

6. The uses also constituted, or would constitute, passing off. They were confusingly similar trade marks within section 56 of the Trade Marks Act 1994, for which there was no own-name defence.

7. The historic website was targeted at UK consumers because its home and London pages advertised restaurants in London by reference to “CIPRIANI”. A court order requiring statements about the earlier findings could justify the London page only until 3 September 2010. The current website, which had no London page and contained no indication of UK targeting, was not shown to be directed at UK consumers.

8. The declarations were therefore granted in relation to the actual and proposed logo uses and the historic website. The current website did not breach the injunction.

• Court of Appeal dismissed the defendants’ appeal from the earlier first-instance judgment on 24 February 2010: [2010] EWCA Civ 110.
• High Court (Chancery Division) determined the present applications concerning the effect and alleged breaches of the injunction.