Hotel Cipriani SRL and Others v Fred 250 Ltd (formerly known as Cipriani (Grosvenor Street) Ltd and Others
| Jurisdiction | England & Wales |
| Judge | The Hon Mr Justice Arnold,Mr Justice Arnold |
| Judgment Date | 29 January 2013 |
| Neutral Citation | [2013] EWHC 70 (Ch) |
| Docket Number | Case No: HC06C04119 |
| Court | Chancery Division |
| Date | 29 January 2013 |
[2013] EWHC 70 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Rolls Building
Fetter Lane, London, EC4A 1NL
The Hon Mr Justice Arnold
Case No: HC06C04119
Benet Brandreth (instructed by Walker Morris) for the First Claimant
Emma Himsworth QC (instructed by Herbert Smith Freehills LLP) for the Second Defendant
Hearing date: 17 January 2013
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Contents
| Topic | Paragraphs |
| Introduction | 1–6 |
| HC's application | 7–13 |
| Giuseppe's application | 14–17 |
| The evidence | 18 |
| Jurisdiction | 19 |
| Determining the effect of the Injunction | 20–21 |
| Giuseppe's role in the management of the restaurants | 22 |
| The logos | 23–48 |
| 24–40 |
| 25 |
| 26 |
| 27 |
| 28 |
| 29–31 |
| 32 |
| 33–40 |
| 41–46 |
| 42 |
| 43 |
| 44–46 |
| 47 |
| 48 |
| The Website | 49–57 |
| 53–55 |
| 56–57 |
| Conclusions | 58 |
Introduction
I gave judgment in these proceedings on 9 December 2008 ([2008] EHWC 3032 (Ch), [2009] RPC 9; "the First Instance Judgment"), concluding that:
i) the use by the First Defendant (then "CGS") of the sign "Cipriani" in relation to a restaurant then called Cipriani London at 23/25 Davies Street, London W1K 3DE (referred to as "the Restaurant" in the First Instance Judgment) had infringed Community Trade Mark No. 115824 ("the CTM") owned by the First Claimant ("HC") pursuant to Article 9(1)(a) of Council Regulation 40/94/EC of 20 December 1993 on the Community trade mark (now codified as Council Regulation 207/2009/EC of 26 February 2009, "the Regulation") and CGS had no defence to that claim under Article 12(a);
ii) CGS' use of the sign "Cipriani London" in relation to the Restaurant had infringed the CTM pursuant to Article 9(1)(b) and CGS had no defence to that claim under Article 12(a);
iii) the Defendants' counterclaims for declarations that the CTM and another trade mark were invalidly registered both fell to be dismissed;
iv) CGS was liable for passing off;
v) HC was entitled to an injunction under section 56 of the Trade Marks Act 1994; and
vi) the Second Defendant ("Giuseppe") and the Third Defendant ("CI") were jointly liable with CGS.
In consequence I made an order on 16 January 2009 which included an injunction ("the Injunction") in the following terms:
"From two months after the date of this paragraph coming into effect, the Defendants shall not (in the case of the First and Third Defendants whether acting by its directors, officers, employees, agents or any of them or otherwise howsoever and in the case of the Second Defendant whether acting by himself or by others acting on his behalf, on his instructions or with his encouragement or otherwise howsoever) do the following acts or any of them within the United Kingdom:
i. infringe the Community Trade Mark number 115824;
ii. pass off any restaurant business not that of or connected with the First Claimant as or for such a business by use of the names CIPRIANI or CIPRIANI LONDON or any other name which is confusingly similar to the name CIPRIANI;
iii. use 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."
The Injunction was stayed pending an appeal by the Defendants.
On 24 February 2010 the Court of Appeal dismissed the Defendants' appeal for the reasons given in its judgment of that date ( [2010] EWCA Civ 110, [2010] RPC 16; "the Court of Appeal Judgment"). Accordingly, the Injunction came into force on 24 April 2010.
In consequence of the Injunction into coming force, CGS changed its name to Fred 250 Ltd ("Fred") and the name of the Restaurant to C London. Subsequently, in November 2011, another company in the Cipriani Group, Downtown Mayfair Ltd ("DM") opened a restaurant called Downtown Mayfair at 15 New Burlington Place, London W1S 2HX.
Since the Injunction came into force there have been a series of disputes between the parties as to whether or not the Defendants have been complying with it. These disputes have led to the two applications which are presently before the Court.
HC's application
By an application notice dated 12 September 2012 HC has applied for a declaration that certain acts constituted a breach of the Injunction. As I understand it, HC has brought the application as a low key method of enforcing the Injunction. With one exception, the acts of which HC complains have ceased. HC's concern is not to obtain penal sanctions, but rather to obtain confirmation that the Injunction prohibits any repetition or continuation of those acts in the future.
Slightly curiously, HC's application has only been made against Giuseppe, and not against the other Defendants. This is on the basis that Giuseppe controls Fred and DM. I shall return to this point below.
HC's application has two limbs. The first limb seeks a declaration that the use of the words "by G. Cipriani" on the windows and menus of C London during the period from May 2010 to December 2011 and on the windows and menus of Downtown Mayfair during the period from November to December 2011 constituted a breach of the Injunction. These words were used in context of logos for the two restaurants.
I reproduce the logo for Downtown Mayfair below:
This logo includes the Logo as defined in the First Instance Judgment at [31].
The logo for C London was the same as the one reproduced below except that it included the words "by G. Cipriani" in place of the words "Managed by Giuseppe Cipriani".
The second limb seeks a declaration that the Cipriani Group's website located at www.cipriani.com ("the Website") has advertised, and continues to advertise, restaurant services to UK consumers in breach of the Injunction.
Giuseppe's application
By an application notice dated 13 November 2012 Giuseppe has applied for a declaration that the use of two logos on the front window, menus and websites of C London and Downtown Mayfair would not constitute a breach of the Injunction.
The logo which is proposed to be used in relation to C London is reproduced below:
The logo which is proposed to be used in relation to Downtown Mayfair is the same as the one reproduced above except that it contains the words "Managed by Giuseppe Cipriani" in place of the words "by G. Cipriani".
Again, it should be noted that the application is made by Giuseppe alone.
The evidence
The evidence on these applications consists of a number of witness statements, including one made by Giuseppe. Sensibly, neither side applied to cross-examine any of the other's witnesses.
Jurisdiction
It is common ground that the Court has jurisdiction to determine both applications. The Court has inherent jurisdiction to grant a declaration where there is a "real commercial reason" for seeking such relief: see Nokia Corp v InterDigital Corp [2006] EWCA Civ 1618, [2007] FSR 23. It is common ground that both sides have a real commercial reason for ascertaining whether the Injunction does or does not prohibit certain acts. Given that the purpose of the applications is to obtain declarations as to the effect of the Injunction, the applications are properly made in the existing proceedings.
Determining the effect of the Injunction
This is not a case in which there is any dispute as to the construction of the Injunction. The dispute is as to whether particular acts which it is accepted have been, or are proposed to be, committed contravene the Injunction. Because, as is conventional, the Injunction is expressed in terms of a prohibition on committing an infringement of the CTM or passing off or using a confusingly similar trade mark, that requires the Court to decide whether those acts amount to infringement or passing off or the use of a confusingly similar trade mark.
It is common ground that the Court must decide those questions in the light of the findings in the First Instance Judgment as upheld by the Court of Appeal Judgment. Those findings are res judicata. It follows that the Defendants are bound by issue estoppels from challenging such findings. Those findings include such matters as the validity of the CTM, the distinctive character of the CTM as at April 2004, the goodwill owned by HC in the United Kingdom in April 2004 and so on. Accordingly, when deciding, for example, whether the acts now complained of by HC constituted an infringement of the CTM and the acts proposed by Giuseppe would constitute an infringement of the CTM, and hence a breach of sub-paragraph (i) of the Injunction, the Court must start from those findings. It must then make any necessary further findings which are required in order to determine whether or not the acts infringe. If Millet J said anything different in Chelsea Man plc v Chelsea Girl Ltd [1988] FSR 217 at 227–228, then I must respectfully disagree with him. In saying that,...
To continue reading
Request your trial
-
Merck KGaA (Respondent/Appellant/Claimant) v Merck Sharp & Dohme Corporation and Others (Appellants/Respondents/Defendants)
...in the High Court in a number of decisions to which we have also been referred, including Hotel Cipriani and Ors v Fred 250 Ltd & Ors [2013] EWHC 70 (Ch), [2013] ETMR 18; Stichting BDO v BDO Unibank Inc [2013] EWHC 418 (Ch), [2013] FSR 35; Thomas Pink Ltd v Victoria's Secret UK Ltd [2014] ......
-
Interflora Inc. (a company incorporated under the laws of Michigan, United States) and Another v Marks and Spencer Plc
...particularly since the court could, in an appropriate case, grant declaratory relief, as it did in Hotel Cipriani Srl v Fred 250 Ltd (formerly Cipriani (Grosvenor Street) Ltd) [2013] EWHC 70 (Ch). Further, the judge continued, M & S had deliberately engaged in a course of conduct well know......
-
Interflora, Inc. and Another v Marks and Spencer Plc and Another
...it has been recognised that there is a procedural solution to this problem, which is the availability of declaratory relief. In Hotel Cipriani Srl v Fred 250 Ltd [2013] EWHC 70 (Ch), [2013] EMTR 18 the claimants applied for a declaration that certain acts had contravened a general injuncti......
-
Jack Wills Ltd v House of Fraser (Stores) Ltd
...see also and by way of example Cartier v. Carlile (1862) 31 Beav. 292per Sir John Romilly MR at 298, and Hotel Cipriani SrL and another v. Cipriani (Grosvenor Street) Limited and others [2010] EWHC 628per Briggs J (as he then was) at [8]: " … where a single head of profit is attributable to......