Cipriani v EUIPO - Hotel Cipriani (CIPRIANI) (EU trade mark - Invalidity proceedings : Judgment) [2017] EUECJ T-343/14 (29 June 2017)

Judgment Background to the dispute In 1956, Mr Guiseppe Cipriani, the father of the applicant, Mr Arrigo Cipriani, and a third party created Hotel Cipriani SpA, the predecessor in title of the intervener, Hotel Cipriani Srl. In March 1958, the Hotel bearing the name Cipriani opened its doors. In 1966, the shares in the intervener’s predecessor in title held by the third party involved in its creation were transferred to Stondon, Ondale and Patmore Company Ltd. In 1967, Giuseppe Cipriani and the Stondon, Ondale and Patmore Company concluded an agreement whereby all of the shares in the predecessor in title of the intervener held by the former were transferred to the latter (‘the 1967 Agreement’). That predecessor in title was also authorised by that agreement to use the name Cipriani subject to certain conditions. On 12 December 1969, the intervener’s predecessor in title applied to register the Italian word mark CIPRIANI, which was registered on 9 December 1971 under the number 254410 for, in particular, services corresponding to the following description: ‘Hotels, restaurants, bars, cafeterias, snack-bars and refreshment places’. On 1 April 1996 the predecessor in title of the intervener filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1)). Registration as a mark was sought for the word sign CIPRIANI. The goods and services for which registration was sought are in Classes 16, 35 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description: – Class 16: ‘Printed matter, cardboard and cardboard articles and tickets, newspapers, periodical publications, brochures, books and stationery, writing instruments, address books and diaries, personal organisers, photographs and posters, playing cards, greeting cards, postcards, maps and pictures’; – Class 35: ‘Advertising, publicity, public relations; marketing and promotional services; hotel management’; – Class 42: ‘Hotels, hotel reservation, restaurants, cafeterias, public eating places, bars, catering; delivery of drinks and beverages for immediate consumption’. The EU trade mark application was published in Community Trade Marks Bulletin No 26/1997 of 3 November 1997. The mark applied for was registered on 9 July 1998 under number 115824. In 2006, the intervener’s predecessor in title was registered with EUIPO as the proprietor of the contested mark. On 31 July 2009, the applicant filed an application with EUIPO for a declaration that the contested mark was invalid in respect of all the goods and services for which it had been registered. The grounds for invalidity relied on in support of that application were those set out in Article 52(1)(b) of Regulation No 207/2009, in that the application for registration of the EU mark had been made in bad faith and, secondly, Article 53(2)(a) of that regulation, read together with Article 8(3) of the Codice della Proprietà Industriale (Italian Industrial Property Code, ‘the IPC’), in that the mark infringed the right of a well-known person to his name, in this case the name Cipriani, the renown of which was closely linked to the person of the applicant, who is a man of culture whose restaurant business has worldwide renown. By decision of 29 November 2011, the Cancellation Division rejected the application for a declaration of invalidity. First, it found that the application for a declaration of invalidity was inadmissible in so far as it was based on Article 52(1)(b) of Regulation No 207/2009 on the ground that a national court with jurisdiction over trade marks of the European Union had already given a definitive ruling on the same question. Secondly, it held that as regards hotel and restaurant services and the related services contained within Class 42, the applicant had knowingly acquiesced to the use of the contested mark for more than five years, within the meaning of Article 28 of the IPC. On that basis it concluded that, as regards those services, the application for a declaration of invalidity based on Article 53(2)(a) of the regulation was inadmissible. Thirdly, as regards the goods and services falling within Classes 16 and 35, it rejected the application for a declaration of invalidity based on Article 53(2)(a) of the regulation, read in conjunction with Article 8(3) of the IPC, on the ground that there was no infringement of the applicant’s right to a name. On 27 January 2012, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division. By decision of 14 March 2014 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the applicant’s appeal. In the first place, as regards the application for a declaration of invalidity on the basis of Article 52(1)(b) of Regulation No 207/2009, the Board of Appeal concluded that there was no bad faith. In that regard, it observed that the predecessor in title of the intervener then the intervener itself had ‘run’ Hotel Cipriani since the 1960s and was the proprietor of an Italian word mark CIPRIANI registered on 9 December 1971 under the number 254410 for goods and services within Classes 29, 30, 32, 33 and 42 within the meaning of the Nice Agreement. It noted that that mark had not been contested by the applicant. It then held that to seek registration as an EU mark for businesses activities lawfully exercised for many years could never constitute an act of bad faith. It stated, furthermore, that the judgment of 9 December 2008 of the High Court of Justice (England & Wales), Chancery Division, (‘the 2008 judgment’) was based on exhaustive, clear and convincing reasoning and that, even though that national decision was not binding on it, it would refer to it. In the second place, the Board of Appeal rejected the application for a declaration of invalidity based on Article 53(2)(a) of Regulation No 207/2009, read in conjunction with Article 8(3) of the IPC. First, it held that the evidence produced by the applicant consisted exclusively of documents in which he was referred to by his first name and surname together, namely Arrigo Cipriani, and that the surname Cipriani on its own did not suffice to identify the person to which the evidence referred. It concluded from that that the contested mark did not infringe the name of the applicant, who could at most rely on the renown of the name Arrigo Cipriani. Secondly, it held that Article 8(3) of the IPC sought to prevent any usurpation by a third party of the name of a well-known person and could not apply where the registration of a mark was applied for by a person who bears the same name. In the present case, since the intervener’s predecessor in title was the rightful successor in title of Guiseppe Cipriani, the father of the applicant, the situation covered by Article 8(3) of the IPC did not exist. Thirdly, the applicant had not established whether or how Italian law dealt with the situation where two people have the same surname or where the name invoked had become well known after the contested sign had begun to be used in trade. In the third place, the Board of Appeal held that it was not therefore necessary to examine whether the applicant had acquiesced in the use of the contested mark by the intervener or whether his application for a declaration of nullity was inadmissible because the question as to the intervener’s alleged bad faith was res judicata on the ground that it was decided by the 2008 judgment. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – declare the contested mark invalid for all the goods and services for which it is registered; – in the alternative, declare the contested mark invalid for all goods or services other than ‘hotels’ and ‘hotel reservation’; – in the further alternative, declare the contested mark invalid for services such as ‘Hotels, hotel reservation, restaurants, cafeterias, public eating places, bars, catering; delivery of drinks and beverages for immediate consumption’; – in the final alternative, refer the case back to EUIPO for the latter to rule on a declaration of invalidity; – order the full reimbursement of the costs incurred in the present proceedings. EUIPO and the intervener contend that the Court should: – dismiss the application; – order the applicant to pay the costs. Law In support of his action the applicant relies on two pleas in law, alleging, first, infringement of Article 53(2)(a) of Regulation No 207/2009 read in conjunction with Article 8(3) of the IPC and, second, infringement of Article 52(1)(b) of Regulation No 207/2009. The Court considers it appropriate to begin by examining the second plea in law. Second plea in law, alleging infringement of Article 52(1)(b) of Regulation No 207/2009 The applicant considers that the contested decision is vitiated by error in so far as the Board of Appeal concluded that there was no bad faith, within the meaning of Article 52(1)(b) of Regulation No 207/2009, in the filing of the application for registration of the contested mark. EUIPO and the intervener dispute the applicant’s arguments. It should be borne in mind, first, that the EU trade mark system is based on the principle, laid down in Article 8(2) of Regulation No 207/2009, that an exclusive right is granted to the person who is first to file. In accordance with that principle, a sign may be registered as an EU trade mark only in so far as it is not precluded by an earlier mark, whether an EU trade mark, a trade mark registered in a Member State or by the Benelux Office for Intellectual Property, a trade mark registered under international arrangements which have effect in a Member State or a trade mark registered under international arrangements which have effect in the European Union. By contrast, without prejudice to the possible application of Article 8(4) of Regulation No 207/2009, the mere fact that a non-registered mark is used by a third party does not preclude an identical or similar mark from being registered as an EU mark for identical or similar goods or services (see judgments of 11 July 2013, SA. PAR . v OHIM — Salini Costruttori (GRUPPO SALINI) , T‑321/10, EU:T:2013:372, paragraph 17 and the case-law cited, and of 28 January 2016, Gugler France v OHIM — Gugler (GUGLER) , T‑674/13, not published, EU:T:2016:44 , paragraph 70). The application of that principle is qualified, inter alia, by Article 52(1)(b) of Regulation No 207/2009, under which an EU trade mark must be declared invalid on application to EUIPO or on the basis of a counterclaim in infringement proceedings where the applicant was acting in bad faith when he filed the application for registration of the trade mark. It is for the applicant for a declaration of invalidity who intends to rely on that ground to establish the circumstances which make it possible to conclude that the proprietor of an EU trade mark was acting in bad faith when he filed the application for registration of that mark (see judgment of 26 February 2015, Pangyrus v OHIM — RSVP Design (COLOURBLIND) , T‑257/11, not published, EU:T:2015:115, paragraph 63 and the case-law cited). The concept of ‘bad faith’ referred to in Article 52(1)(b) of Regulation No 207/2009 is not defined, delimited or even described in any way in the legislation (judgment of 1 February 2012, Carrols v OHIM — Gambettola (Pollo Tropical CHICKEN ON THE GRILL) , T‑291/09, EU:T:2012:39, paragraph 44). It must be observed that, in the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361 ), the Court of Justice provided some clarification regarding the way in which the concept of bad faith, as referred to in Article 52(1)(b) of Regulation No 207/2009, should be interpreted. According to the Court of Justice, in order to determine whether the applicant for registration acted in bad faith, for the purposes of Article 52(1)(b) of Regulation No 207/2009, account must be taken of all the relevant factors specific to the particular case which obtained at the time of filing the application for registration of a sign as an EU trade mark, in particular: (i) the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product or service capable of being confused with the sign for which registration is sought; (ii) the applicant’s intention to prevent that third party from continuing to use such a sign; and (iii) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought (judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli , C‑529/07, EU:C:2009:361 , paragraph 53). Nonetheless, it is apparent from the wording used by the Court of Justice in the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361 , paragraph 53) that the factors listed are only examples drawn from a number of factors which can be taken into account in order to decide whether an applicant for registration was acting in bad faith at the time when the trade mark application was filed (see judgment of 26 February 2015, COLOURBLIND , T‑257/11, not published, EU:T:2015:115, paragraph 67 and the case-law cited). It must therefore be held that, in the context of the overall analysis undertaken pursuant to Article 52(1)(b) of Regulation No 207/2009, account may also be taken of the origin of the contested sign and its use since its creation, the commercial logic underlying the filing of the application for registration of that sign as an EU trade mark, and the chronology of events leading up to that filing (see judgment of 26 February 2015, COLOURBLIND , T‑257/11, not published, EU:T:2015:115, paragraph 68 and the case-law cited; see also, to that effect, judgment of 11 July 2013, GRUPPO SALINI , T‑321/10, EU:T:2013:372, paragraph 23). The Court will review, in particular in the light of the foregoing considerations, the legality of the contested decision, inasmuch as the Board of Appeal concluded that there was no bad faith in the filing of the application for registration of the contested mark. As a preliminary point, it should be noted that it is common ground that the alleged bad faith must be shown to have existed at the time when the application for registration of the contested mark was filed, namely the 1 April 1996 (‘the relevant date’). The present plea in law is composed, in essence, of two branches, alleging, first, the brevity of the contested decision’s reasoning relating to the analysis of the application for a declaration of invalidity based on Article 52(1)(b) of Regulation No 207/2009 and, second, the incorrect assessment by the Board of Appeal as to the existence of bad faith on the part of the intervener’s predecessor in title. The first branch, alleging the very brief nature of the contested decision’s reasoning regarding the analysis of the application for a declaration of invalidity based on Article 52(1)(b) of Regulation No 207/2009 As the applicant alleges that the reasoning regarding the analysis of the application for a declaration of invalidity based on Article 52(1)(b) of Regulation No 207/2009 was very brief, it must be observed that, even acknowledging such brevity, that does not mean that the reasoning given in the contested decision was inadequate. It must be borne in mind that, in accordance with Article 75 of Regulation No 207/2009, decisions of EUIPO must state the reasons on which they are based. That obligation to state reasons, which also derives from Article 296 TFEU, has been the subject of settled case-law according to which the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable, first, the persons concerned to exercise effectively their right to request judicial review of the contested decision and, secondly, the Court to exercise its power to review the legality of the decision (see judgment of 12 February 2015, Vita Phone v OHIM (LIFEDATA) , T‑318/13, not published, EU:T:2015:96 , paragraph 46 and the case-law cited; see also, to that effect, judgment of 13 December 2011 in Meica v OHIM — Bösinger Fleischwaren (Schinken King) , T‑61/09, not published, EU:T:2011:733, paragraph 17 and the case-law cited). It must be held that, in the contested decision, the Board of Appeal carried out an analysis of the circumstances of the case and responded to the arguments made by the applicant. Thus by upholding the commercial logic of the intervener’s predecessor in title, which was already the proprietor of an identical national word mark, the Board of Appeal rejected the applicant’s arguments that that predecessor in title sought to harm him and profit from the renown of the name Cipriani. Furthermore, by expressly referring to the 2008 judgment, the Board of Appeal rejected the applicant’s arguments as to an alleged intention on the part of the intervener’s predecessor in title to profit from his renown and as to the negotiations in the United States, since similar arguments had been answered in that decision, and it was not necessary for the Board of Appeal to reproduce the reasoning of that decision. In that regard, contrary to what the applicant implies, the contested decision is not vitiated by any contradictory reasoning regarding the Board of Appeal’s reference to the 2008 judgment. Without prejudice to the question of whether the existence of the latter judgment could entail the inadmissibility of the application for a declaration of invalidity based on Article 52(1)(b) of Regulation No 207/2009 on the ground that it had ruled, with the force of res judicata , on the issue of the alleged bad faith of the intervener’s predecessor in title, it follows from a consistent line of case-law that, while EUIPO is not bound by decisions given by national authorities, EUIPO may nevertheless take those decisions into consideration, without them being binding or even determinative, as indicia in the assessment of the facts of the case (see judgment of 18 March 2016, Karl-May-Verlag v OHIM — Constantin Film Produktion (WINNETOU) , T‑501/13, EU:T:2016:161, paragraph 36 and the case-law cited). Consequently, the Board of Appeal cannot be criticised for having referred to the 2008 judgment in the contested decision. It follows from the foregoing that, as regards the assessment of the application for a declaration of invalidity based on Article 52(1)(b) of Regulation No 207/2009, the contested decision is supported by reasons to the requisite legal standard. Consequently, the first part of this ground of appeal must be rejected. The second branch, alleging the incorrect assessment by the Board of Appeal as to the existence of bad faith on the part of the intervener’s predecessor in title The applicant considers that the Board of Appeal was wrong to conclude that there was no bad faith on the part of the intervener’s predecessor in title at the relevant date. – The taking into consideration of the existence of the earlier Italian word mark CIPRIANI and the alleged intention of the intervener’s predecessor in title to profit from the renown of the name Cipriani and that of the applicant In order to reach the conclusion that there was no bad faith within the meaning of Article 52(1)(b) of Regulation No 207/2009 at the relevant date, the Board of Appeal noted, in paragraph 32 of the contested decision, that that predecessor in title, and then the intervener itself had ‘run’ Hotel Cipriani since the 1960s and that the intervener was the proprietor of the Italian word mark CIPRIANI registered on 9 December 1971 ‘in Classes 29, 30, 32, 33 and 42’, and that that mark had not been challenged. It then held that to seek registration as an EU mark for business activities lawfully exercised for many years could never constitute an act of bad faith. The applicant contests the Board of Appeal’s assessment and alleges that the existence of bad faith must be demonstrated on the basis of the circumstances of the case, which may reveal bad faith on the part of an applicant for registration even if that registration was connected with an activity carried on lawfully. In the present case, the intervener’s predecessor in title intended to block the activity of the applicant in the independent restaurant sector and obtain a registration that could be invoked, as has indeed happened, in order to commence legal and administrative proceedings against the applicant and his family regarding their activities in that sector. Furthermore, it had the intention of profiting from the renown enjoyed by the name Cipriani in that sector at the relevant date. The arguments put forward by the applicant cannot be upheld. In the first place, it must be observed that, as the Board of Appeal stated, in essence, in paragraph 32 of the contested decision, the applicant does not call into question the fact that, at the relevant date, the intervener’s predecessor in title was already the proprietor of another mark CIPRIANI, namely the Italian word mark CIPRIANI, filed on 12 December 1969 and registered on 9 December 1971 under number 254410 for, in particular, ‘hotels’, ‘restaurants’, ‘bars’, ‘cafeterias’, ‘snack bars’ and ‘refreshment places’ (see paragraph 4 above). The applicant confirmed at the hearing that he had not challenged either the registration or the use of that mark. It must be recalled that, according to the case-law, extending the protection of a national mark by registering it as an EU mark is part of an undertaking’s normal commercial strategy (see, to that effect, judgments of 1 February 2012, Pollo Tropical CHICKEN ON THE GRILL , T‑291/09, EU:T:2012:39, paragraph 58, and of 14 February 2012, Peeters Landbouwmachines v OHIM — Fors MW (BIGAB) , T‑33/11, EU:T:2012:77, paragraph 23). Thus, the application for registration of the contested mark may be regarded as having been part of the commercial strategy of the intervener’s predecessor in title. It is true that the applicant submits that the intervener’s predecessor in title, which operates only in the hotel sector, acted in bad faith to the extent that it filed the contested mark without intending to use it for services other than hotel services, in particular for independent restaurant services. That argument made by the applicant must however be rejected. It must be observed, as the intervener points out, that it is common ground that, at the relevant date, the intervener’s predecessor in title offered restaurant services to residents of the hotel but also to other customers. Consequently, the facts of the case do not show that, at the relevant date, the predecessor in title did not intend to use the contested mark for the restaurant services in respect of which registration was sought. Furthermore, the applicant has not produced any evidence in support of his allegation that the sole intention of the intervener’s predecessor in title was to hinder his activity in the independent restaurant sector. Finally it cannot be deduced from the fact that the intervener’s predecessor in title applied for registration for the services within Class 42, but also for goods and services covered by Classes 16 and 35 respectively, that it intended to pursue an objective other than that of a commercial and foreseeable development of its activities. In the second place, the applicant alleges that the intervener’s predecessor in title intended to free ride on his renown by imitating his initiatives and profiting from the renown enjoyed by the name Cipriani in the restaurant services sector at the relevant date. That allegation is confirmed in particular by the fact that, already in 1979, the intervener’s predecessor in title had opened a bar in London (United Kingdom) called ‘Harry’s Bar’ which was a copy, not only in name but also in style, of the ‘Harry’s Bar’ of Venice (Italy), of which the applicant was the proprietor. In that regard, it must be recalled that, even if proved, that opening, which, according to the applicant, occurred in 1979, was substantially earlier than the relevant date. The applicant does not set out the reason why the existence of the alleged bar in London enabled the conclusion to be reached that there was bad faith on the part of the predecessor in title at the relevant date, namely some 16 years later. Even if the applicant intends to submit that the predecessor in title had repeatedly sought to profit from his renown and that enjoyed by the name Cipriani by creating confusion between them and that the application for the registration of the contested mark constituted, after the creation of the alleged bar in London, a fresh example of the intention of the predecessor in title in question to profit from his renown, and thus an act of bad faith, that argument could not have any effect on the analysis of whether there was bad faith on the part of the predecessor in title concerned when making the application for registration of the contested mark, namely the word mark CIPRIANI. As was observed in paragraph 44 above, it is common ground that the registration of that mark was applied for at a time when the predecessor in title in question was the proprietor of an identical national mark, registered in particular for bars, and that that mark had never been challenged by the applicant. If the applicant had opposed the registration or use of the national mark CIPRIANI and, in spite of that opposition, the intervener’s predecessor in title had nevertheless decided to apply for registration of an identical sign as an EU mark, those facts could possibly have led to a question as to whether there was bad faith on the part of the predecessor in title at the relevant date. However, in the absence of a challenge to the earlier Italian mark CIPRIANI and even though the contested mark is made up of the same word element, which, moreover, appears in the denomination of that predecessor in title, it cannot be accepted that the opening, by that party, of an alleged bar in London named ‘Harry’s Bar’ could result in a finding that, by filing the application for registration of the contested mark, the same predecessor in title conducted itself with a view to profiting from the alleged renown of the name Cipriani and that of the applicant. Consequently, the applicant’s argument cannot call into question the Board of Appeal’s assessment that, in essence, the intervener’s predecessor in title wished to extend the protection of its national mark to the EU level and that could not be assimilated to an act of bad faith at the relevant date. – The reference to the 2008 judgment In reaching the conclusion that there was no bad faith on the part of the intervener’s predecessor in title at the relevant date, the Board of Appeal stated, in paragraph 33 of the contested decision, that the 2008 judgment rested on exhaustive, clear and convincing reasoning, and that, even though that national judgment was not binding, it would refer to it. The applicant contests the interpretation given by the High Court of Justice (England & Wales), Chancery Division in the 2008 judgment of Clause 3.1 of the 1967 Agreement on the use of the name Cipriani by the intervener’s predecessor in title after the share transfer (see paragraph 3 above). He claims in that regard that any interpretation of that clause which deduces, merely from the word ‘exclusive’ referred to therein, a transfer in perpetuity of rights over the name Cipriani for all sectors of goods and services would be in flagrant contradiction to the specific and express clause under which that predecessor in title had an exclusive right over the name which was limited both to a period of five years and to the hotel sector. He considers that his interpretation of that clause is confirmed by the conduct of the parties in the years following the signing of that agreement. According to him, that predecessor in title had therefore acted in bad faith by applying for registration of the contested mark even though it was perfectly well aware of the limits on its right to use the name Cipriani under that agreement. As a preliminary point, it should be recalled that, in accordance with the case-law referred to in paragraph 38 above, the 2008 judgment could be taken into account as one of the indicia when assessing the facts at issue. In the first place, even though the Board of Appeal did not take the step of referring the parties specifically to the grounds of the 2008 judgment, it must be observed that the High Court of Justice (England & Wales), Chancery Division considered in that judgment that, contrary to the intervener’s claims, the 1967 Agreement was a relevant factor to be taken into consideration when assessing whether the intervener’s predecessor in title had acted in bad faith in applying to register the contested mark. In the second place, it should be stated that the terms of Clause 3 of the 1967 Agreement, entitled ‘Other provisions’, were worded as follows: ‘3.1 — You [Mr Giuseppe Cipriani] agree that the [intervener’s predecessor in title] will be enabled to keep the current name and that the Villa Cipriani Hotel of Asolo [Italy] will be enabled to maintain its current name, and that in general [they] will have the exclusive right to use the name “Cipriani”, even after both you and your family will have no more financial interest in [that predecessor in title] and even in the case in which either you or your son will cease to have a position on the [predecessor in title’s] Board. You also promise to abstain from setting up, and to keep any member of your family from attempting to set up, for a period of five years from this date, any new concern that would use the name “Cipriani” or that would tend in any way to divert patronage from the [same predecessor in title] or from the Villa Cipriani Hotel, except with our [Stondon, Ondale and Patmore Company] consent. It remains furthermore understood that you and your successors and any persons having good cause will be allowed to continue to use the name “Cipriani” for the Cipriani Inn at Torcello [Italie]. 3.2 — On our part [namely Stondon, Ondale and Patmore Company Limited] we promise to abstain, for a period of five years from this date [the date of the present agreement], from starting any new concerns using the name “Cipriani”, except with your consent. 3.3 — We promise to do our best to assure for the future the excellence and high quality of the services provided by the [predecessor in title concerned] and by the Villa Cipriani Hotel to their respective clienteles.’ It must be observed that, contrary to the applicant’s claims, there is no element which leads to the conclusion that the interpretation of Clause 3.1 of the 1967 Agreement by the High Court of Justice (England & Wales), Chancery Division fails to respect the rules generally recognised for the interpretation of contracts, in particular taking into account the intention of the contracting parties (Article 1362 of the Codice civile (Italian civil code)), the overall interpretation of the clauses (Article 1363 of the Italian civil code) and the preservation of the contract (Article 1367 of the Italian civil code). As the High Court of Justice (England & Wales), Chancery Division held, in essence, in the 2008 judgment, it must be held that the part of Clause 3.1 of the 1967 Agreement according to which, ‘in general [the intervener’s predecessor in title and the hotel Villa Cipriani] will have the exclusive right to use the name ‘Cipriani’ means, read in conjunction with Clause 3.2 of that Agreement, that those two entities had, under that Agreement, the exclusive right, as regards third parties, to use the said name, as a part of names, for any hotel related activity and, after a period of five years starting from the date on which that agreement was concluded (‘the five year period’), in respect of other activities, in particular restaurant services. It must be observed that two similar provisions, concerning the restrictions placed on the activities of the two parties in the 1967 Argreement and the use of the name Cipriani during the five year period, had been inserted in Clauses 3.1 and 3.2 of that agreement. Under the first provision, in Clause 3.1 of the agreement, the obligation was imposed during that period on Mr Giuseppe Cipriani and his family not to establish new businesses that made use of the name Cipriani or were capable in any way of diverting the clientele of the intervener’s predecessor in title or the Hotel Villa Cipriani. That prohibition was not therefore directed only at the establishment of new hotels, but also covered restaurants that could enter into competition with a restaurant in a hotel of the purchaser of the shares in the said predecessor in title which were held by Giuseppe Cipriani. Under the second provision, in Clause 3.2 of the agreement in question, an obligation was imposed on the purchaser for the five year period not to establish new businesses, such as hotels or restaurants, using the name Cipriani. On the other hand, at the end of the five year period, it follows from Clauses 3.1 and 3.2 of the 1967 Agreement, that both the purchaser of the shares in the intervener’s predecessor in title, which were held by Giuseppe Cipriani and the latter and his family could, in accordance with the applicable legal rules on the subject, create new businesses using the Cipriani name. In accordance with the rules for the interpretation of contracts, recalled in paragraph 56 above, there is no reason to interpret Clause 3.1 of that agreement concerning Giuseppe Cipriani and his family as having permitted them, after the five year period, to open any type of business using the Cipriani name, whilst the aforementioned purchaser and the said predecessor in title only had the right to open, using the Cipriani name, hotels or restaurants in hotels and not, for example, bars or restaurants outside hotels. Furthermore, as regards the applicant’s claim that the only aim and effect of Clause 3.1 of the 1967 Agreement on the use of names containing the name Cipriani was to allow the intervener’s predecessor in title to continue to use the names Hotel Cipriani and Hotel Villa Cipriani in its hotel business, it must be held that, as the High Court of Justice (England & Wales), Chancery Division found in the 2008 judgment, such an interpretation would be illogical given that it was the name Cipriani which the said predecessor in title and Hotel Villa Cipriani could use exclusively, and not their respective complete names. Furthermore, if the interpretation of that clause suggested by the applicant were to be upheld, the third part of that clause, according to which ‘[Giuseppe Cipriani promised] to abstain from setting up, and to keep any member of your family from attempting to set up, for a period of five years from this date, any new concern that would use the name “Cipriani” or that would tend in any way to divert patronage from the [same predecessor in title] or from the Villa Cipriani Hotel, except with our [purchaser of Giuseppe Cipriani’s] consent’ would be redundant. Moreover, while the applicant submits that his own interpretation is confirmed by the conduct of the parties in the years following the signing of the agreement, the intervener’s predecessor in title having not opened a restaurant under the Cipriani name in more than 30 years after the agreement was signed, it can be observed that the High Court of Justice (England & Wales), Chancery Division emphasised the fact that, in more than 30 years, Giuseppe Cipriani and the applicant had acted in a manner consistent with its interpretation of Clause 3.1 of the 1967 Agreement since they had not opened hotels or restaurants under the name Cipriani or under a name that included the Cipriani name, whether in Italy or elsewhere in Europe, until the year 2000 when the Cipriani restaurant in Porto Cervo (Italy) had been opened, which is not contested by the applicant. Consequently, in those circumstances, an element cannot be deduced from the conduct of the parties following the conclusion of the said agreement which is determinative for the purposes of interpreting the terms of Clause 3 of that agreement. Finally, it must be observed that the 2008 judgment was upheld by the Court of Appeal (England & Wales) (Civil Division) in its judgment of 24 February 2010. It follows from the foregoing considerations that the applicant’s arguments in respect of the reference to the 2008 judgment must be rejected. – The failure to take into account the decision of the Tribunale civile di Venezia (Venice Civil Court) The applicant criticises the Board of Appeal for not having taken into account a decision of the Tribunale civile di Venezia (Venice Civil Court, Italy) by which that court reached conclusions contrary to those reached in the 2008 judgment in declaring that ‘on the basis of the 1967 Agreement ..., there [was] no bar starting from the date of expiry of the five year period under clause 3.1 of the Agreement on use of the name “Cipriani” by [him] and the [intervener’s predecessor in title]’. He submits that those conclusions thus expressly contradict the argument, advanced by the intervener and accepted by the High Court of Justice (England & Wales), Chancery Division, that the right to use the name Cipriani had been transferred in perpetuity to the predecessor in title for all categories of goods and services, which meant that the registration by the latter of the name Cipriani as an EU mark was lawful. In that regard, it must be observed that, even though the applicant refers to the number of a document which does not correspond to any of the annexes to its written submissions before the General Court, the decision of the Tribunale civile di Venezia (Venice Civil Court) of 15 July 2011 appears in the administrative file of the proceedings before EUIPO. As regards the extract from the decision of the Tribunale civile di Venezia (Venice Civil Court) of 15 July 2011 relied on by the applicant, there is nonetheless no contradiction between it and the interpretation of the 1967 Agreement in the 2008 judgment. The Tribunale civile di Venezia (Venice Civil Court) simply considered that the restriction on use of the Cipriani name by, in particular, the applicant was lifted after the five year period. In the 2008 judgment, however, it was not stated that that restriction continued beyond that period and it follows from the reasoning of the High Court of Justice (England & Wales), Chancery Division that, after that period expired, both the intervener’s predecessor in title, then the intervener, as well as Giuseppe Cipriani and his family, and therefore the applicant, were entitled to use the Cipriani name in accordance with the applicable legal rules (see paragraphs 57 to 60 above). Accordingly, the applicant’s argument must be rejected. – On the existence of negotiations in the United States in 1996 The applicant relies on the existence of negotiations in the United States between the intervener’s predecessor in title and himself, which were ongoing at the relevant date and would lead, a few months later, in 1997, to a transaction being signed. In that regard, however, none of the arguments advanced by the applicant explain how the negotiations in the United States could have influenced the conduct of that predecessor in title or contributed to proving bad faith on its part at the relevant date. It is true that the applicant submits, in essence, that, at the close of those negotiations, the restriction to the hotel sector of the right of the intervener’s predecessor in title to use the Cipriani name in the United States would be confirmed, which allegedly prompted the latter to wish to file, in the EU, the application to register the contested mark for services other than hotel services. However, it must be held that the applicant’s argument is contradictory in that respect since he alleges that that restriction already existed for the activities of the predecessor in title in the EU (see paragraph 52 above). Therefore, even if such a restriction in the United States was known to the predecessor in title at the relevant date, those negotiations having been concluded on 4 April 1997, namely about one year after that date, that restriction would not have been likely to influence its decision to register the contested mark in the EU. If, on the other hand, that restriction did not exist for the activities of the same predecessor in title in the EU because the 1967 Agreement had not imposed it, contrary to the applicant’s claims, then the negotiations in the United States were even more unlikely to influence the decision of the predecessor in title concerned to register the contested mark. Consequently, that argument made by the applicant must be rejected. – Conclusion It follows from all the foregoing considerations that the Board of Appeal did not err in law in holding, in essence, in paragraph 32 of the contested decision, that there was no bad faith on the part of the intervener’s predecessor in title at the relevant date. The second branch of this plea must therefore be rejected. Consequently, this plea in law must be rejected as unfounded. First plea in law, alleging infringement of Article 53(2)(a) of Regulation No 207/2009, read in conjunction with Article 8(3) of the IPC The applicant considers, in essence, that the contested decision is wrong in law in that the Board of Appeal found that the intervener could not be prohibited from using the Cipriani name under Article 53(2)(a) of Regulation No 207/2009, read in conjunction with Article 8(3) of the IPC. EUIPO and the intervener dispute the applicant’s arguments. In accordance with Article 53(2)(a) of Regulation No 207/2009, an EU mark is to be declared invalid on application to EUIPO if its use could be prohibited pursuant to the right to a name under the national law governing its protection. Article 8(3) of the IPC provides: ‘If they are well known, the following may be registered as a trade mark by the proprietor, or with the consent of the latter [...]: personal names, signs used in the artistic, literary, scientific, political or sporting fields, the designations and acronyms of events and those of non-profit making bodies and associations, including their characteristic emblems.’ In the present case, in paragraph 24 of the contested decision, the Board of Appeal found that Article 8(3) of the IPC did not apply because, in essence, the person of the applicant was not sufficiently identified and therefore his name was not infringed. In that regard, in paragraph 26 of the decision, it observed that the applicant did not invoke the name Arrigo Cipriani but only the surname Cipriani, whereas the contested mark is made up of the surname and does not contain any other element that would allow it to be thought that it designated the person of the applicant. According to it, the applicant could have, at most, relied on the renown of his name formed of his first name and surname, namely the name Arrigo Cipriani, the registration of which he was probably entitled to prohibit. Moreover, in paragraph 28 of the contested decision, the Board of Appeal held that Article 8(3) of the IPC must necessarily be interpreted as precluding any unauthorised use of the name of another person, since it made registration as an Italian mark expressly contingent upon consent. According to it, that provision sought to prevent any usurpation by a third party of the name of a well-known person and could not apply where the registration of a mark was applied for by a person bearing the name in question. The intervener’s predecessor in title having been the rightful successor in title to Guiseppe Cipriani, the applicant’s father, it concluded that, in the present case, the situation covered by Article 8(3) of the IPC did not exist. Finally, in paragraph 29 of the contested decision, the Board of Appeal stated that the applicant had not proven whether and how Italian law deals with the situation where two persons, who could both be renowned in the same or in different fields of social or commercial activities, had the same family name. According to the case-law, it was for the applicant for a declaration of invalidity to produce the national provisions or elements of doctrine that applied to the case. In the present case, it was common ground that the intervener’s predecessor in title had started to use the sign Cipriani as a mark designating a hotel before the date from which the applicant could claim to have acquired renown for his own activities. Therefore, the applicant should also have established how Italian law dealt with a situation where a name had acquired renown after the contested sign had started to be used in trade. The Board of Appeal stated in that regard, in paragraph 30 of the contested decision, that the intervener used and could continue to use that sign pursuant to the 1967 Agreement, to which the parties had amply referred and which permitted it to use the word ‘cipriani’ to designate its services. As a preliminary observation, as the Board of Appeal stated in paragraph 22 of the contested decision, it is common ground that, in the present case, under Article 53(2)(a) of Regulation No 207/2009, the contested mark could be declared invalid if its use could be prohibited under Italian law for a name protected by Article 8(3) of the IPC. Furthermore, it is uncontested that the existence of that right to a name must be examined as at the relevant date. In the first place, the applicant alleges that, contrary to the assessment by the Board of Appeal (paragraphs 23 to 27 of the contested decision), it is incorrect and contrary to Italian law to consider that Article 8(3) of the IPC only protects a name in so far as it identifies a person, since that would mean that the said provision would only be infringed if the third party’s action was ‘to cast doubt on the identity’ of a person. According to him, that provision seeks exclusively to protect the commercial value of the name and to reserve its exploitation to the proprietor of the name. That claim by the applicant must be rejected since it rests on an incorrect reading of the contested decision. The assertion made by the Board of Appeal in paragraph 27 of the contested decision that ‘since the function of a right in a name is only to identify the identity of a person under that name, such right can only be infringed if the allegedly infringing act would be of such a kind as to cast doubt on the identity of a (natural or legal) person’, while being somewhat infelicitously worded, must be read in its context. First of all, in paragraph 23 of the contested decision, the Board of Appeal observed that, since the application for a declaration of invalidity was only based on a personal name, the applicant could only seek protection against an infringement of the Cipriani name as a personal name, which is not disputed by the applicant. In paragraph 24 of the decision, the Board of Appeal considered that the registration of the contested mark did not infringe the name of the applicant. Next, in addition to the considerations set out in paragraphs 26 and 28 of the contested decision, set out in paragraphs 75 and 76 respectively above, the Board of Appeal stated, in paragraph 29 of the decision, that the applicant should have established how Italian law dealt with a situation where the name had acquired renown after the contested sign had started to be used in trade. Finally, in paragraph 30 of the contested decision, the Board of Appeal stated that ‘Article 8(3) IPC [sought] to protect the names of renowned persons from arbitrary registration, provided that those names unambiguously identify such persons.’ It is clear from all those considerations set out by the Board of Appeal that it examined, in accordance with Article 8(3) of the IPC, whether the registration of a mark could infringe a well-known name. Moreover, it is sufficiently clear from its reasoning that it was referring to the protection against commercial usurpation of a personal name and not to the protection against usurpation of a person’s civil identity. In the second place, the applicant alleges that the Board of Appeal wrongly considered that, first, under Article 8(3) of the IPC, he could not rely on the renown of the surname Cipriani, but could only rely on the renown of his first name and surname together and, second, the said surname did not refer to his person. First, the applicant alleges that, on the basis of its incorrect interpretation of Article 8(3) of the IPC, the Board of Appeal concluded that the applicant was identified by the combination of a name and surname, given that that combination served as his name, whilst the surname Cipriani was insufficient to identify him (paragraphs 24 to 27 of the contested decision). However, according to him, it is justified and even obligatory to protect that surname, since a renown is inextricably linked to it. In the present case, it is uncontested that under Article 8(3) of the IPC the registration of a sign as an Italian national mark must be refused if the name for which registration is sought is the name of a well-known person in Italy and the owner of that name has not consented to registration of that mark. It is also uncontested that, in the present case, since the contested mark is the word mark CIPRIANI, it could be declared invalid, under the provisions recalled in paragraph 78 above, if it infringed the Cipriani name. Furthermore, it is not disputed that the said name could be a personal name and have renown in Italy. Moreover, it must be recalled that, contrary to the claims made by the applicant, the Board of Appeal did not incorrectly interpret Article 8(3) of the IPC (see paragraphs 79 to 85 above). Finally, it must be observed that the Board of Appeal sought to establish whether the contested mark consisted of the registration of a well-known name which the applicant could rely on. It concluded from those matters that the applicant was required to establish that the renown of the Cipriani name, used only, having regard to the contested mark, in the form of that single name, was attached to his person. It must be observed that the applicant also submitted, in the grounds for his application for a declaration of invalidity, that the renown of that name was closely linked to his person. He submitted, furthermore, in his written submissions before the General Court and in essence at the hearing that ‘the aim of Article 8(3) of the IPC was more specifically to “assure the entitled party the exclusive right to commercially exploit the fame, and thus the evocative capacity, which some names possess and which on the market becomes a capacity to sell”’. Consequently, in order to be able to rely on the protection of the right to a name laid down in Article 8(3) of the IPC and to contest use of the renown of that name and the commercial value attached to it, as the Board of Appeal correctly considered, in essence, in paragraphs 24, 26 and 31 of the contested decision, the applicant could not rely on the renown of that name unless, used on its own, that name necessarily evoked his person. At the hearing, in reply to a question from the Court, it is true that the applicant submitted that since the Cipriani name enjoyed renown as a family name, Article 8(3) of the IPC had to be interpreted as meaning that any member of his family bearing that surname could dispute the registration and use of a mark containing the name, by invoking the renown of the Cipriani name. However he went on to say that only his father and himself could act on that basis by relying on the renown of the surname in question because they created that renown. Besides the fact that that argument is not very clear, it must be stated that the applicant has not produced particulars capable of substantiating such an interpretation of Article 8(3) of the IPC. Consequently, failing any such particulars produced by the applicant — even though he bore the burden of producing before EUIPO particulars establishing the meaning of the national legislation of which he sought application for the purpose of being able to prohibit use of the contested mark (see, to that effect, judgment of 5 July 2011, Edwin v OHIM , C‑263/09 P, EU:C:2011:452 , paragraph 50) — that interpretation cannot be upheld. Secondly, the applicant considers that he produced a large amount of evidence that, on its own, the surname Cipriani is ‘commonly linked per se’ to his person. In support of that submission he refers, more specifically, to 60 documents that relate to him and in the titles of which the surname Cipriani appears. After examining those 60 documents, which comprise, with just one exception, newspaper and magazine articles, it must indeed be observed that the surname Cipriani appeared on its own in their titles. However, as EUIPO and the intervener submitted, in those articles the applicant is referred to by his first name and surname in the body of the article, in particular in the beginning thereof, or indeed the signature on the article, as well as, in 38 of those documents, next to or below the applicant’s photograph. The reference only to the surname Cipriani in the title of an article cannot be regarded as an indication that, used on its own, that surname ‘is commonly linked per se’ with the applicant, as the latter claims. As EUIPO submits, it must be observed that such a reference could be due to a common practice in the media and justified by page layout requirements for the article in question. Furthermore, the insertion of a photograph of the applicant in an article or the presence, in the body of that article, of a reference to the applicant’s first and surname together diminishes the impact of the reference to the Cipriani surname alone in the title of the same article. Moreover, it must be observed that, since nine of those 60 documents were articles signed by the applicant himself, they could not in those circumstances prove, from the mere fact that they referred only to the Cipriani surname in their titles, that, used by itself, that surname necessarily evoked the applicant. In addition, the only one of the 60 documents, cited most specifically by the applicant, in which the applicant’s first name is not mentioned is an invitation card to a reception. Even if it were established that, on that card, the surname Cipriani was that of the applicant, that document, which is undated, cannot make it possible to establish, moreover by itself, that the renown of that surname was necessarily linked to the person of the applicant. Consequently, as the Board of Appeal correctly considered, in essence, in paragraph 24 of the contested decision, the documents identified by the applicant as being most capable of showing that, used by itself, the surname Cipriani would necessarily evoke his person do not enable such a link to be proven. That finding is all the more important in the present case where it is possible that the name Cipriani, accompanied as the case may be, inter alia, by a first name or another element, could evoke persons or entities other than the applicant. As the applicant moreover submitted, the name Cipriani is the surname of various members of his own family. As the Board of Appeal correctly found, in essence, in paragraph 26 of the contested decision, that name is thus capable of designating Giuseppe Cipriani, the applicant’s father, co-founder of the intervener’s predecessor in title. Furthermore, it must be noted that, amongst the documents produced and cited by the applicant, in the title of which only that name appears (see paragraph 93 above) two of them evoke various members of the applicant’s family, whilst two others, mentioning ‘the Ciprianis’, also refer to different members of the applicant’s family. In those documents, the first names of the persons concerned also appear in the body of the article. Moreover, having regard to the circumstances of the case recalled in paragraphs 1, 3 and 4 above, the name Cipriani could also evoke the intervener’s predecessor in title, who filed the application for the contested mark, and thereafter the intervener, or even the Italian word mark Cipriani. The use of the said name by that predecessor in title, then by the intervener itself, was moreover known for a long time to the applicant since the predecessor in title had obtained permission to use the name under the 1967 Agreement concluded with the applicant’s father, at the time of the sale of the shares of the same predecessor in title which he held (see paragraph 3 above), the activities covered by that permission not being very significant in that regard. It follows from the foregoing considerations that, at the relevant date, the name Cipriani could potentially designate, inter alia, members of a family, including the applicant, if the name was accompanied by a first name, since it could also designate the intervener’s predecessor in title and, thereafter, the intervener, if the name was accompanied, in particular, by the word ‘hotel’, or also the hotel Cipriani. It could, furthermore, refer to the Italian word mark CIPRIANI (see paragraph 4 above). In that regard, it must be stated that, in the context of the present action, it is not for the Court to establish either the existence of the alleged renown of any of the parties or entities referred to in paragraph 101 above which could be designated by the name Cipriani, or, as the csae may be, the date on which such renown was acquired. In those circumstances, the fact that, at the relevant date, the applicant could not, under Article 8(3) of the IPC, rely on the renown of the Cipriani name without it being accompanied by his first name means that that provision could not be relied on in order to dispute the validity of the contested mark. Finally, it must be observed that, as the Board of Appeal correctly stated in paragraph 25 of the contested decision, the present case must be distinguished from the case leading to the judgment of 14 May 2009, Fiorucci v OHIM — Edwin (ELIO FIORUCCI) (T‑165/06, EU:T:2009:157), upheld on appeal by the judgment of 5 July 2011, Edwin v OHIM (C‑263/09 P, EU:C:2011:452 ). In that case, it was uncontested that the name Elio Fiorucci necessarily evoked the person of Italian stylist Elio Fiorucci, whose name was well known in Italy, and the disputed mark that had been registered was precisely the EU mark Elio Fiorucci, which manifestly referred to the stylist in question, who was the applicant in that case. In the third place, it is necessary to reject the applicant’s arguments contesting the findings of the Board of Appeal in paragraphs 28 and 29 of the contested decision. First, the applicant’s argument rests on his own interpretation of the 1967 Agreement, which has already been rejected (see paragraphs 52 to 62 and 64 to 66). In that context, since the applicant also claims, in essence, that the intervener’s predecessor in title and the intervener had never used the Cipriani name for services other than hotel services, it must be recalled that the intervener’s predecessor in title had obtained the registration of the Italian word mark CIPRIANI, covering, inter alia, services other than hotel services, the registration and use of which the applicant has never contested (see paragraphs 4 and 44 above). Secondly, the applicant does not dispute that he did not produce particulars establishing how Article 8(3) of the IPC is applied in a case where an applicant for registration of the mark at issue and the party relying on the application of that provision bear the same surname. It follows from all the foregoing considerations that, in the circumstances of the case, as the Board of Appeal held, in essence, in paragraph 24 of the contested decision, the contested mark could not infringe, for the purposes of Article 8(3) of the IPC, the right to the name Cipriani, as claimed by the applicant. Consequently, the present plea in law, and therefore the application in its entirety, must be dismissed as being unfounded, without it being necessary to rule either on the issue of admissibility under the applicant’s second head of claim or on the preliminary objections raised by the intervener concerning the partial inadmissibility of the application for a declaration of invalidity, as found by the Cancellation Division. Costs Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, he must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby: 1. Dismisses the action; 2. Orders Mr Arrigo Cipriani to bear his own costs and to pay the costs incurred by the European Union Intellectual Property Office (EUIPO) and those of Hotel Cipriani Srl. Berardis Papasavvas Spineanu-Matei Delivered in open court in Luxembourg on 29 June 2017. E. Coulon G. Berardis Table of contents Background to the dispute Forms of order sought Law Second plea in law, alleging infringement of Article 52(1)(b) of Regulation No 207/2009 The first branch, alleging the very brief nature of the contested decision’s reasoning regarding the analysis of the application for a declaration of invalidity based on Article 52(1)(b) of Regulation No 207/2009 The second branch, alleging the incorrect assessment by the Board of Appeal as to the existence of bad faith on the part of the intervener’s predecessor in title – The taking into consideration of the existence of the earlier Italian word mark CIPRIANI and the alleged intention of the intervener’s predecessor in title to profit from the renown of the name Cipriani and that of the applicant – The reference to the 2008 judgment – The failure to take into account the decision of the Tribunale civile di Venezia (Venice Civil Court) – On the existence of negotiations in the United States in 1996 – Conclusion First plea in law, alleging infringement of Article 53(2)(a) of Regulation No 207/2009, read in conjunction with Article 8(3) of the IPC Costs * Language of the case: English. © European Union The source of this judgment is the Europa web site. 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