Trade Marks and Passing Off: Hotel Cipriani SRL and Others v Cipriani (Grosvenor Street) Ltd & Ors  EWHC 3032 (Ch) (9 Dec 2008)
When I worked for VISA in 1984 I believe I had lunch at the Hotel Cipriani in Venice. I can't remember a vast amount about it other than that one had to take a boat trip. The food was OK though it can't have been all that outstanding because I can't remember what I ate. By contrast, I can remember every morsel of a meal at The Auberge de l'Il in Alsace. Having said that I have always been a bit down on Venice (Sorry Jan Morris) for various reasons. Not least the proclivity of the the local dustmen to clatter their bins at about 3 AM and carry on a conversation at the top of their voices every day without fail when I had to get up early to do a day's work.
Anyway the owners of the Hotel Cipriani have just won an action against the owners of the Cipriani London for trade mark infringement and passing off ( Phones 4U Ltd v Phone4U.co.uk Internet Ltd  EWCA Civ 244,  RPC 5 at :
"It was in 1879 that James LJ observed that 'the very life of a trade mark depends on the promptitude with which it is vindicated', Johnston v Orr-Ewing (1879) 13 Ch.D 434 at p. 464. Nothing has changed. Like gardens trade mark cases always get worse with neglect – even if rights are not actually lost, delay is apt to turn what would be over in a few weeks by a quick application into a mini State Trial. As here."
The defendants ran a number of defences:
- there was no likelihood of confusion because there had been no instance of confusion in the market place;
- they were merely using their own name in accordance with art 12 of the Community trade mark regulation; and that
- the Community trade mark registration was invalid because it had been obtained in bad faith.
None of these was to any avail. Mr Justice Arnold concluded that the defendants were liable for trade mark infringement and passing off and that the claimants were entitled to an injunction.
Probably the most interesting bit of the judgment is the rejection of the "own name" defence where the judge reconciled pretty niftily the ECJ's decision lat year in