In addition, the hotel regularly hosted cookery courses and demonstrations and its chefs participated in gastronomic events abroad, including in London. made much the same point in relation to the name of a newly formed company: “Any fear that dishonest people might form companies with misleading names so as to take advantage of the defence is easily removed by the use of the proviso - such a deliberate attempt to avail oneself of another’s mark would not be an honest practice”. On the Giudecca there is another bar and restaurant called Harry’s Dolci, opened by Arrigo in 1983. INGROSSO E DETTAGLIO ACQUE, BEVANDE, BIRRE, VINI E LIQUORI. The House of Lords affirmed the decision of the Court of Appeal that the goodwill was property locally situate outside the UK. Yet others (including much professional advice) may not depend on location at all. On that basis, subject to two points, what the defendant is doing infringes the first claimant’s rights under Art.9(1)(a) of the CTM Regulation (CTMR) (or, to give it its official name, Council Regulation of 20 December 1993 on the Community Trade Mark, 40/94/EEC). It is very clear that in such circumstances the foreign trader has not acquired anything which in law could be described as goodwill in this country.”. Again, if the facts as to the distribution of the products were more complicated, as, for example, if the trade were diffused over England and other countries, then the location of the goodwill would be a more complex, although I do not by any means think an insoluble, problem. 256. 15 Following the successful opening of the Hotel Cipriani, Lord Iveagh asked Giuseppe Senior to run a small hotel which he owned in Asolo, a hill town some way northwest of Venice. It succeeded in its opposition as regards the Cipriani Service mark, and as regards the Cipriani Food mark it was able to secure that the registration was limited to certain foodstuffs. Since it did infringe the CIPRIANI CTM, the appeal on this point also failed. The court regarded it as relevant that a third party had long used a sign for an identical or similar product capable of being confused with the mark applied for, and that that sign enjoyed some degree of legal protection. If so, the rule that a company can only rely on its corporate name is not absolute. In such a case the applicant’s aim in obtaining registration might be to compete unfairly with a competitor who is using a sign which had gained some degree of legal protection. On that basis he held that the first claimant had proved that it had not merely a substantial reputation but also a valuable goodwill in this jurisdiction in respect of the name Cipriani. 5. That being so, I find it difficult to see why a corporate entity should not be able to do so, if it can show that it uses a distinct name for trading purposes. 45 Some of the products of the Cipriani food production business have been distributed in the UK since the early 1990s. Absent such a reputation, it can have no goodwill. In the light of all of the above considerations, the answer to the question referred must be that the unauthorised use by a third party of a company name, trade name or shop name which is identical to an earlier mark in connection with the marketing of goods which are identical to those in relation to which that mark was registered constitutes use which the proprietor of that mark is entitled to prevent in accordance with Art.5(1)(a) of the Directive, where the use is in relation to goods in such a way as to affect or be liable to affect the functions of the mark. He did not find that it had goodwill in the UK. Appeal from – Hotel Cipriani Srl and others v Cipriani (Grosvenor Street) Ltd and others ChD (Bailii, [2008] EWHC 3032 (Ch)) . 53 The court’s answer to the referred questions was as follows: “Having regard to all the foregoing, the answer to the questions referred is that, in order to determine whether the applicant is acting in bad faith within the meaning of Art.51(1)(b) of Regulation No 40/94, the national court must take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of the sign as a Community trade mark, in particular: – 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 capable of being confused with the sign for which registration is sought; – the applicant’s intention to prevent that third party from continuing to use such a sign; and, – the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.”. ([84]), H39 (12) The judge had been right to hold that the defence under Art.12(a) had not been made out by the defendants, and that the CIPRIANI CTM had been infringed. 74 The defendants criticised the judge’s reasons for holding that the first defendant’s use of the name Cipriani, or Cipriani London, even if it had been its “own name” (contrary to his primary decision), was not in accordance with honest practices. He did not find that it had goodwill in the UK. Supposing that the products of the manufactory were all exported to England and sold to English customers, I should find it difficult to hold that the goodwill was out of England merely because the manufactory was. Lord Robertson’s speech includes the following passage on this point: “I do not accede to the view that the goodwill is affixed or attached to the manufactory. At page 469 he said, “Now Mr. Kentridge has, throughout his clear and helpful address to the court, repeatedly referred to goodwill in the words of Lord Macnaghten in the Muller’s Margarine case as “the attractive force which brings in custom.” But one asks oneself “what custom in this country in 1973 was brought in by the knowledge of members of the indigenous British public of the plaintiffs’ Budweiser beer?” And the answer must be that there was none, because however attractive they may have found the idea of drinking the plaintiffs’ beer, they could not get it. Arrigo claimed in evidence that Giuseppe had consulted Marshall Bernstein of Robinson Brog Leinwand Greene Genovese & Gluck P.C., the Cipriani Group’s US lawyers about the use of the company name Cipriani (Grosvenor Street) before the Restaurant opened. So far as trade mark infringement is concerned, they assert that the use of the signs Cipriani and Cipriani London by the first defendant comes within the “own name” defence as regards the Cipriani CTM. That was held not to be an adequate basis for a passing-off claim. He looked ahead to the position as it might be at trial, envisaging that the plaintiff might be able to show that it had a reputation and goodwill which would be exposed to risk from confusion between their business and that of the defendant, even though they were carrying on business in different parts of the world. In practice it would only be important if the first claimant were to lose its registrations, though in theory it could be relevant if there were a defence to the injunction claim under the Cipriani CTM, such as the own name defence. H7 HC was the registered proprietor of Community Trade Mark No. The issue is the same as for the Cipriani CTM, though by reference to the later date of the application in 2006. The allegations in support of the claim included that the Parisian restaurant had an extensive fame and goodwill, that it is extensively patronised by persons resident in England and that there had been some direct bookings from England to reserve a table there. 102 In the Court of Appeal, Oliver L.J. I do not agree that the decision goes so far as that. 40 The position was much the same in respect of Locanda Cipriani, though its reputation was less extensive and its clientele smaller than Harry’s Bar and the Hotel Cipriani: paras.34 and 35. I accept that Arrigo and Giuseppe had an eminently understandable reason for wanting to call the Restaurant by a name which included their family name. Oliver L.J. However, it does not seem to me that this case offers a suitable opportunity. There is no inconsistency between this interpretation of the first part of clause 3.1 and the third part, which gives SOP additional protection during the five year period.”. He said that the existence and extent of the plaintiff’s reputation and goodwill in every case is a question of fact, however it may be proved and whatever it is based on. GC senior remained chairman until 1973. 112 On that basis he held that the New York company would have been entitled to protect its name against third parties here because it had always had a significant number of customers in this country. 58 A CTM does not entitle the proprietor to prohibit a third party from using in the course of trade his own name or address, provided that the third party uses them in accordance with honest practices in industrial or commercial matters: see Art.12(a) of the CTMR. The judge held that each party’s product had a reputation in the UK and neither could claim that the other’s was improperly achieved. Already much earlier, from about 1989, bills issued to customers at Harry’s Dolci, and probably at Harry’s Bar as well, were headed with the logo, the word Cipriani in a box, a reference to Harry’s Bar (or Harry’s Dolci, as the case may be) and the name and details of Arrigo Cipriani Srl, and with names, addresses and telephone numbers of other Cipriani enterprises including Cipriani Catering. The New York restaurants had some reputation in the UK but no substantial goodwill had been proved in respect of them. H23 The only ground of attack on the validity of the CTM was that the application had been made in bad faith. Attention is to be focussed on the position at the time of the application for registration, and the intention and state of mind of the applicant at that time, although they are subjective factors, are to be determined by reference to the objective circumstances of the particular case. He referred to Lord Diplock’s judgment in Star Industrial Co Ltd v Yap Kwee Kor. I-691, [2004] R.P.C. The defendant was acquired to be used for importing luggage and travel goods, to be sold to the same retailers. It seems to me that the explanation for the difference is that using an established trading name may well satisfy the test of honest use, whereas to adopt a new corporate or trading name for a new business which conflicts with an existing registered trade mark is unlikely to do so. Whether or not either or both of Hotel Villa Cipriani and Locanda Cipriani had such goodwill is of no relevance to the contest between the parties before us. Nor has there been any attempt to stop that particular practice since 1996 on the basis of the Cipriani CTM. The judge at first instance made findings as at that date and also as at April 1996, when the first claimant’s CTM was registered.1. 39] that a man may use his own name even if there is some actual confusion with a registered trade mark. There are other companies connected with the defendants, and referred to by the defendants as being parts of the Cipriani group of companies, but for present purposes it is unnecessary to mention them. As pointed out by Wadlow in The Law of Passing-off, 3rd ed (2004) at para.3-80, service businesses are of several different kinds. Neither of them was trading and therefore the question did not arise of their use of any name. As regards Locanda Cipriani, the right to use the name was recognised in terms in the 1967 agreement. 13 In 1938 Giuseppe Senior bought an old inn on the island of Torcello, and renamed it Locanda Cipriani. H12 Since its acquisition by OEHG, HC had benefited from substantial investment which enabled it to expand the hotel substantially. Copy link. Once the Hong Kong Company had abandoned that part of its former business that consisted in manufacturing toothbrushes for export to and sale in Singapore it ceased to have any proprietary right in Singapore which was entitled to protection in any action for passing-off brought in the courts of that country.”. ([83]), H38 (11) The judge had been correct in holding that the own name defence was of no assistance to the second or the third defendant in respect of their accessory liability for the first defendant's infringement. The judge found that the first claimant had the goodwill necessary for a passing-off claim, but none of the defendants did, nor did any other related entity. 22 As I have said, Giuseppe Senior sold his interest in the hotel in Venice to the Guinness family interest. As I have said, I agree with the judge that the exclusivity of the first claimant’s reputation was qualified only in respect of Hotel Villa Cipriani and Locanda Cipriani, whose position is irrelevant for present purposes. 73 On the facts of the present case the defendants need to justify the use of the word Cipriani by itself, as well as that of Cipriani London. That seems to me to be the correct basis for the decision in Asprey & Garrard, by which Peter Gibson L.J.’s observations in paras.43 and 49 can stand together, permitting the possibility of an established trading name which might allow successful use of the defence, whereas a brand new corporate name or trading name would not do so, and certainly did not on the facts of that case. The court also regarded it as relevant that the registered mark consisted of the entire shape and presentation of the product, that being restricted for technical or commercial reasons (in respect of which it no doubt had in mind, for example, the essential shape of a rabbit or a hare), so that the registration, if valid, would prevent competitors not only from using a particular sign but also from marketing similar products at all. However widely extended or diffused its influence may be, goodwill is worth nothing unless it has power of attraction sufficient to bring customers home to the source from which it emanates.”. as part of the names Hotel Cipriani and Hotel Villa Cipriani). Iain Purvis, Q.C. 85 For these reasons, although I differ from the judge in regarding a trading name as potentially protectable under Art.12(a), I conclude that the judge was right to hold that the defence under Art.12(a) was not made out by the defendants, and that the Cipriani CTM was therefore infringed. I have already referred to the question of concurrent reputation and goodwill, and to the judge’s findings on reputation and goodwill. 24 He held that the agreement did not give the first claimant the exclusive right to register Cipriani as a trade mark in respect of hotel and restaurant services, not least because the agreement said nothing about trade marks as such. The defendants argued that the first claimant knew in April 1996, at the time of the application to register the CIPRIANI CTM, that the CIPRIANI mark had a shared reputation extending to the Cipriani family and group, the latter being itself entitled to some degree of legal protection, and that the effect of the registration would be to impede the ability of the concurrent user to exploit his share of the reputation. H17 The defendants also sought a declaration of invalidity in respect of the claimants’ UK registration relying on ss.3(6) and 5(4)(a) of the Trade Marks Act 1994, although there was no allegation of infringement respecting this mark. The judge accepted that the business of recording and running recording studios was international, that a studio may well be used in a country other than that in which the artists or the producers live, and that the New York studio had been used by producers and artists from England for many years past. Book Belmond Hotel Cipriani, Venice on Tripadvisor: See 1,063 traveler reviews, 1,207 candid photos, and great deals for Belmond Hotel Cipriani, ranked #43 of 409 hotels in Venice and rated 4.5 of 5 … said at para.49 that the defence was not available to the first defendant “as it is not using its own name”. It is not clear from Arrigo’s evidence that Mr Bernstein was told what the trading name of the Restaurant was intended to be, let alone that it would be called just Cipriani. The only evidence adduced in this respect was evidence of the exposure of the New York restaurants in the media – in the Financial Times columns as to where to go in New York, and otherwise in celebrity publications, mostly dating from after the date which is relevant for these proceedings. At para.43 of the judgment he said this about the defence: “As the judge said, the defence has never been held to apply to names of new companies as otherwise a route to piracy would be obvious. Maxim’s Ltd v Dye [1977] F.S.R. The overall circumstances of the case seem to me inconsistent with a finding of honest use. Peter Gibson L.J. In that case Mr William R Asprey, a former employee of the claimant (who was the second defendant in the proceedings), established a company, the first defendant, of which he owned 70%. 114 He then pointed out that Browne-Wilkinson VC had gone further, holding that it was sufficient for goodwill to exist in the UK that a foreign service provider has customers here, whether or not their business is placed directly from this country. I will call it the Restaurant. However, the New York company had never had a place of business here or an agent in this country, and its services had always been rendered outside the UK. It could not, therefore, be justified under the proviso even if (contrary to my view already expressed) the word Cipriani was to be regarded as the first defendant’s own name, as a trading name adopted by it. Superior 20/25 m2 - 2 people Classic 20 m2 - 2 people Giuseppe Senior managed it until 1959 when he became chairman. So far as a claim by the first claimant against the first defendant is concerned, this is to be tested as at April 2004, when the Restaurant opened. In 1967 Giuseppe Senior sold his shareholding to SOP by an agreement which I will mention later. Secondly, if it is, why is that which the defendants can show not sufficient (as the judge held)? ([119],[120]), H45 (18) It was necessary to show more than the defendants had managed to show in order to establish goodwill in England for a mark used by a business based abroad for services which it supplied abroad. Whilst the Restaurant had received some mixed reviews it had been successful and had been patronised by a number of celebrities. 39, ECJ, Inland Revenue Commissioners v Muller & Co’s Margarine Ltd [1901] A.C. 217, HL. He had not erred in holding that the application had not made in bad faith and that the registration was therefore valid. H3 The first claimant (first respondent) (“HC”) owned and operated the Hotel Cipriani in Venice. H30 (3) Testing the position as at April 1996, and in relation to the European Community, it was noteworthy that there was at that time no use of the mark CIPRIANI in relation to hotels or restaurants in Europe other than by the first claimant, the Hotel Villa Cipriani and the Locanda Cipriani. H16 The claimants alleged that CGS’s use of the sign CIPRIANI in relation to the Restaurant infringed its CTM registration pursuant to Art.9(1)(a) of the Regulation. I-10989, para.82). The plaintiffs tried to stop them using the name Budweiser in their marketing by a passing-off action. The amount of confusion which can be tolerated is a question of degree – only if objectively what he does, in all the circumstances, amounts to unfair competition, will there also be infringement. The defendants attack the validity of both the Cipriani registrations. That sounds like a very cautious statement, and fortunately it is enough for the present question. 75 Equally, the defendants’ objections to the judge’s reasoning based on the likelihood of confusion depend on the premise that, first, the judge was wrong to find that the Hotel Cipriani had an exclusive reputation in the UK in relation to the name Cipriani for hotels and restaurants in the UK, and secondly that the Cipriani Group, including the first defendant, did have a valuable reputation in the UK which it was entitled to exploit. That being so, and notwithstanding that argument was presented to us on the point as it had been before the judge, I do not need to say more than that I consider that the judge was correct to find in favour of the first claimant on this claim, for the reasons that he gave. H6 There was a historical link between the claimants on the one hand and the Cipriani family, and hence the Cipriani Group, on the other hand. H15 The defendants’ restaurant was located in Davies Street, Mayfair. It specialises in simple, traditional Italian food. Set on Giudecca Island, a five-minute ride by private launch from St Mark’s Square, Belmond Hotel Cipriani captures everything La Serenissima is famed for. ([56],[57]), H32 (5) The mischief of a misleading name, whether a corporate name or a trade name, was to be dealt with by reference to the proviso to Art.12(a) of Council Regulation 40/94, not by a rigid rule that a trade name could not be an “own name” for this purpose. Its style is said to be based on that of Harry’s Bar and, in that respect, to be similar to the various Cipriani restaurants in New York (other than the Rainbow Room). Therefore, whatever test might be applied to determine whether a business supplying services abroad which has a reputation in England also has goodwill in England, the defendants do not satisfy it. 32 As regards the UK registration, on which the claimants do not base a claim for infringement, the first issue is whether that registration too was obtained by bad faith, relying on s.3(6) of the Trade Marks Act 1994. For my part I agree with him that the application was not made in bad faith and that the registration is therefore valid. 28 It is also the registered proprietor of UK trade mark number 2435200, with effect from 11 October 2006, in respect of an almost identical specification of goods and services as for the Cipriani CTM. Asprey & Garrard Ltd v WRA (Guns) Ltd [2002] F.S.R. In turn that depends on whether the first claimant could have restrained the defendants from using the word in England by virtue of its own prior rights. 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