11 December 2008

Trade Marks and Passing Off: Hotel Cipriani SRL and Others v Cipriani (Grosvenor Street) Ltd & Ors [2008] 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 (Hotel Cipriani SRL and Others v Cipriani (Grosvenor Street) Ltd and Others [2008] EWHC 3032 (Ch) (9 Dec 2008). Not the least remarkable feature of this case is that the claimants allowed the defendants to operate them restaurant from April 2004 even though they had held a Community trade mark for the word CIPRIANI for hotels, restaurants and the like in class 43 since 1 April 1996. The judge could not forbear quoting Lord Justice Jacob in  Phones 4U Ltd v Phone4U.co.uk Internet Ltd [2006] EWCA Civ 244, [2007] RPC 5 at [8]:
"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 Celine Sarl v Celine SA [2007] EUECJ C-17/06 (11 Sep 2007) with Asprey & Garrard Ltd v WRA (Guns) Ltd [2001] EWCA Civ 1499[2002] FSR 31 and Premier Luggage & Bags Ltd v Premier Co (UK) Ltd [2002] EWCA Civ 387, [2003] FSR 5. 

Also of practical use to your actual trade mark lawyer in Battersea (or for that matter Barnsley) was his discussion of why there can be a likelihood of confusion between a registered mark and the defendant's mark when there has not actually been any confusion during the whole time the defendant has been trading.  I've got a case where I have to argue that point before the Registrar and Richard Arnold has made my task a whole lot harder.

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