Topic: Brands
Who: Various members of the Cipriani family, various member companies of the Orient Express Hotel group, the Honourable Mr Justice Arnold.
When: 29 January 2013
Where: High Court of Justice, Chancery Division
Law stated as at: 1 March 2013
What happened:
The Hotel Cipriani (“HC”) is a luxury hotel located on the island of Giudecca, in Venice, Northern Italy. It was founded in 1958 by one Giuseppe Cipriani, who also founded the well known Harry’s Bar in Venice and is the reported inventor of the Bellini cocktail. The Cipriani dynasty have gone on to run a number of prestigious venues including New York’s Rainbow Room – however in 1967 an Agreement was signed providing for the sale of the Hotel Cipriani through Giuseppe Cipriani Senior’s shareholding with a limited non-compete provision over future use of the Cipriani name. HC is today owned by Orient-Express Hotels (“OEH”), who are also the owner of a European community trade mark (“CTM”) for the word CIPRIANI.
Sell in 1967, repent at leisure
In 2004, Giuseppe’s children Giuseppe Cipriani and Arrigo Cipriani opened a restaurant in London under the name “Cipriani London”.
Unfortunately for the brothers OEH believed this to be a breach of their trade mark and launched litigation in the English High Court in 2008.
Arnold J., who heard the case, came down on the side of OEH, ruling that their CTM had been infringed under Article 9(1)(b) of the CTM Regulation (previously 40/94/EEC, now replaced by 207/2009/EC).
The attempt by the defendants to rely on the “own name” defence in Article 12(a) against the trade mark infringement claim was unsuccessful. To cap matters off, Arnold J. also found the defendants were liable for passing off.
The Ciprianis succeeded in appealing the matter to the Court of Appeal in 2010, but had no joy there either as the Court simply upheld Arnold J.’s judgment. The injunction that Arnold J. had granted then came into force, preventing the defendants from, among other things, using “the trade marks CIPRIANI or CIPRIANI LONDON or any other trade mark which is confusingly similar to the trade mark CIPRIANI in relation to restaurant services.”
What happened after the Court of Appeal’s ruling?
Following this case, the first defendant’s company name was changed from Cipriani (Grovesnor Street) Ltd to Fred 250 Ltd, and the restaurant was rebranded as “C London”. In 2011, the brothers opened another restaurant “Downtown Mayfair”, owned by another Cipriani group company, Downtown Mayfair Ltd.
The latest conflict
Since the Court of Appeal judgment there have been a number of tussles over whether the defendants are complying with the injunction. One of these led the parties back to the High Court on 17 January this year. Arnold J. was again the trial judge. Assorted OEH companies made a claim for a declaration of infringement in respect of certain uses, while the defendants (who comprised the younger Giuseppe, parent company Cipriani International SA and Fred 250 Ltd. and will be referred to from now on as “D”) made a counterclaim for a declaration of non-infringement in respect of certain other proposed uses.
The claims
OEH’s complaint was that that both of the London restaurants had adopted logos featuring the subtitle “by G. Cipriani” in smaller italic font. A logo and the subtitle were used in the window display and on the menus for each restaurant. OEH also claimed that the Cipriani Group website www.cipriani.com was advertising UK restaurant services to consumers in the UK. OEH sought a declaration from Arnold J. that these were both breaches of the injunction and claimed passing off.
D on the other hand was looking for a declaration that not only was the current usage of “by G. Cipriani” acceptable, but also that amending the subtitle to “Managed by Giuseppe Cipriani” for each logo would also work within the confines of the injunction.
What did the judge decide?
Arnold J. ruled that the use of the current italic subtitles AND the proposed longer italic subtitles both qualified as infringing usage
contrary to the injunction. The judge also ruled that the facts also met the test for passing off.
The website was held to be in breach of the injunction until December 2011, when a redesign had removed the page concerning the group’s London restaurants. From this date Arnold J. ruled that it did not target UK consumers and was therefore not currently in breach.
What was the judge’s reasoning?
Holding a registered trade mark gives the proprietor the right to sue if an identical or similar mark is used in connection with identical or similar goods and/or services without authorisation, where the use
has caused or is likely to cause confusion in the mind of the average consumer.
Arnold J reiterated his earlier judgment as follows:
(1) The average consumer in this case was representative of the adult general public which patronised restaurants, particularly expensive ones. Restaurant selection was not an area over which the average consumer took especial care.
The average consumer would be aware that Cipriani was an Italian
surname.
(2) The CIPRIANI trade mark was well known and had sufficient distinctiveness to be enforceable.
(3) The services provided by each party were identical. D had submitted that the subtitles were unlikely to cause confusion as they were not used for the purpose of distinguishing the services in question. Arnold J did not accept this argument, drawing parallels with other London restaurants where the name of the proprietor communicated something significant regarding the origin of the services provided by the restaurant – for example “Alain Ducasse at
the Dorchester”, “Gordon Ramsey at Claridges”.
D also submitted that, given how well known Giuseppe was as a restauranteur, and given that the names of each restaurant could not be confused with HC or its services, the average consumer would simply understand the subtitle as denoting the role of Giuseppe in the restaurants. Arnold J. was not convinced that G was well known to the average consumer in the UK.
Further, the names of the restaurants, while not confusing, were also
not very distinctive. As such there was a greater chance of consumers thinking the subtitle formed a significant part of the restaurant’s name and a likelihood of confusion.
Finally, D submitted that in any event, D had a defence under Article 12 (b) of the CTM Regulation, as the subtitles were “indications concerning the quality or other characteristics of the restaurant services”. Arnold J. did not agree, as he did not believe that D had provided evidence to demonstrate this, for example, by showing that Giuseppe was known for managing restaurants using a certain system which “resulted in particular benefits for the cuisine or service”.
Why this matters:
As this case has continued over the years, it acts as a good reminder of how much brand value a well-known individual’s name can carry.
Celebrities looking to run businesses making use of the goodwill inherent in their own name may therefore be well advised to look into registering their name as a trade mark (if possible). Should this registration be successful, care should be taken when considering disposing of the rights to the brand.
The latest instalment also raises some interesting issues surrounding proprietor subtitles in restaurant names. It seems the courts may be likely to regard these as a distinctive part of the restaurant’s brand unless the main restaurant name is itself suitably distinctive.
Hotel Cipriani SRL and others v Fred 250 Ltd and others [2013] EWHC 70 (Ch), 29 January 2013.
