Hotel Cipriani Srl & Ors v Cipriani (Grosvenor Street) Ltd & Ors [2010] EWCA Civ 110 (24 February 2010)

Hotel Cipriani Srl & Ors v Cipriani (Grosvenor Street) Ltd & Ors [2010] EWCA Civ 110 (24 February 2010)

The defendants' use of 'Cipriani' for their London restaurant infringed the claimants' Community Trade Mark, as the claimants had exclusive goodwill in the UK for hotel and restaurant services under that name. The CTM was not registered in bad faith, as there was no concurrent use or right in Europe at the time of registration. The 'own name' defence did not apply because the defendants' use was not their established own name and was not in accordance with honest practices. The claimants were entitled to injunctive relief.

Citation
[2010] EWCA Civ 110
Parties
Claimant/respondent: Hotel Cipriani SRL; Claimant/respondent: Hotelapa Investimento Hoteleiro SA; Claimant/respondent: Island Hotel (Madeira) Ltd; Defendant/appellant: Cipriani (Grosvenor Street) Ltd; Defendant/appellant: Giuseppe Cipriani; Defendant/appellant: Cipriani International SA
Jurisdiction
England and Wales
Judgment Date
24 February 2010
Procedural Posture
Appeal (civil) / Court of Appeal Judgment on Appeal From High Court (chancery Division)
Outcome
Appeal dismissed; judgment for claimants upheld.
Legal Topics
Community Trade Mark Infringement, Own Name Defence, Bad Faith Registration, Section 56 Trade Marks Act 1994, Passing Off, Concurrent Goodwill
Intellectual Property Trade Marks Passing Off Community Trade Mark Infringement Own Name Defence Bad Faith Registration Section 56 Trade Marks Act 1994 Concurrent Goodwill

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Parties

Hotel Cipriani SRL

Claimant/respondent

Hotelapa Investimento Hoteleiro SA

Claimant/respondent

Island Hotel (Madeira) Ltd

Claimant/respondent

Cipriani (Grosvenor Street) Ltd

Defendant/appellant

Giuseppe Cipriani

Defendant/appellant

Cipriani International SA

Defendant/appellant

Procedural Posture

Appeal (civil) / Court of Appeal Judgment on Appeal From High Court (chancery Division)

Legal Issues

  1. 1 Whether the use of 'Cipriani' by the defendants infringes the claimants' Community Trade Mark (CTM)
  2. 2 Whether the CTM registration was obtained in bad faith
  3. 3 Whether the 'own name' defence applies to the defendants' use

Ratio Decidendi

The defendants' use of 'Cipriani' for their London restaurant infringed the claimants' Community Trade Mark, as the claimants had exclusive goodwill in the UK for hotel and restaurant services under that name. The CTM was not registered in bad faith, as there was no concurrent use or right in Europe at the time of registration. The 'own name' defence did not apply because the defendants' use was not their established own name and was not in accordance with honest practices. The claimants were entitled to injunctive relief.

Court Disposition

Appeal dismissed; judgment for claimants upheld.

Orders

  • Injunction restraining defendants from using 'Cipriani' in relation to the restaurant business in the UK.
  • Account of profits to be taken against the defendants.