Hotel Cipriani SRL and Others v Cipriani (Grosvenor Street) Ltd and Others
| Jurisdiction | England & Wales |
| Judge | Lord Justice Lloyd,Lord Justice Stanley Burnton,Lord Justice Jacob |
| Judgment Date | 24 February 2010 |
| Neutral Citation | [2010] EWCA Civ 110 |
| Docket Number | Case No: A3 2009/0252 |
| Court | Court of Appeal (Civil Division) |
| Date | 24 February 2010 |
[2010] EWCA Civ 110
[2008] EWHC 3032 (Ch)
Mr Justice Arnold
Before: Lord Justice Jacob
Lord Justice Lloyd
and
Lord Justice Stanley Burnton
Case No: A3 2009/0252
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
Simon Thorley Q.C., James Mellor Q.C. and Charlotte May (instructed by Withers LLP) for the Appellants
Iain Purvis Q.C. and Benet Brandreth (instructed by Walker Morris) for the Respondents
Hearing dates: 13–15 January 2010
Lord Justice Lloyd:
Introduction
There is in Venice a famous and luxurious hotel, Hotel Cipriani. It is owned and run by the First Claimant in these proceedings, Hotel Cipriani Srl, which is part of the Orient Express group. Also in Venice, and also famous, is a bar and restaurant called Harry's Bar. In and near Venice there are two other establishments which feature in the evidence in this case, Locanda Cipriani on the island of Torcello in the Venetian lagoon and Hotel Villa Cipriani in the hill-town of Asolo. An observer aware of these undertakings but not otherwise informed might suppose that there was a connection, at least between the two hotels and the Locanda. An observer with more information would be aware that there was or had also been a connection between Harry's Bar and the other entities through the Cipriani family. Such observers would be right as to a connection between all four, but only to the extent that Signor Giuseppe Cipriani (grandfather of the Second Defendant) was concerned in all four being established. None of these four is now under common or connected ownership. Only two are owned within the Cipriani family, but differently from each other, namely Harry's Bar and Locanda Cipriani.
Hotel Cipriani Srl is the holder of Community Trade Marks in respect of the word Cipriani and the phrase Hotel Cipriani in respect of goods and services including in particular hotels, restaurants, bars and catering. It also holds UK trade marks in respect of the same word and phrase and for the same goods and services. It does not carry on any business at premises in the UK but the business which it does carry on in Venice has an international reputation. It is unnecessary to refer separately to the other Claimants at this stage.
The First Defendant operates a restaurant business at premises in Davies Street, London W1, under the name Cipriani London, or Cipriani for short. I will call it the Restaurant. The Second Defendant, to whom I will refer (meaning no disrespect) as Giuseppe, is the sole director of the First Defendant. The Third Defendant gave a licence to the First Defendant to use the name Cipriani. 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.
The Restaurant opened in April 2004. Those behind the First Claimant were aware of it shortly before it opened. Complaint was made to the Second Defendant, though not until October 2004. Proceedings were threatened in January 2005. The first letter before action was sent in April 2006. These proceedings were commenced in November 2006.
By the claim, the Claimants seek injunctions restraining the Defendants from using the name Cipriani in relation to the Restaurant, on the basis of infringement of their Community Trade Mark for the word Cipriani (I refer to this as “the Cipriani CTM”, and to a Community Trade Mark in general as “CTM”), and also under section 56 of the Trade Marks Act 1994, which provides protection for well-known marks, and on the basis of passing-off. They also claim monetary remedies. The different causes of action may give rise to injunctions in different terms as a matter of detail, but the main point is whether the Claimants are entitled to an injunction at all.
The Defendants contended (and contend) that the Claimants cannot satisfy the requirements of the tort of passing-off, nor those of section 56. 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. They also sought (and seek) a declaration that each of the Cipriani CTM and the UK trade mark registered for the word Cipriani is invalid as having been applied for in bad faith, and that the UK trade mark is invalid under section 5(4)(a) of the 1994 Act as regards earlier rights.
The case came to trial before Arnold J in October and November 2008. He gave judgment on 9 December 2008 for the Claimants on all points: [2008] EWHC 3032 (Ch). He gave permission to appeal on all points other than findings of primary fact, and though he granted injunctions he stayed their effect on terms pending the appeal. As regards monetary remedies, the Claimants have elected for an account of profits, and the taking of the account is under way.
On the appeal, Mr Thorley Q.C. for the appellants put his arguments about passing-off at the forefront of his case. He argued that the passing-off claim cannot be made out because the parties (he said) enjoy concurrent goodwill (together also with the owners of Locanda Cipriani and Hotel Villa Cipriani) in the mark Cipriani in respect of restaurants in this jurisdiction. The Defendants also challenge the factual findings of the judge, though only as regards his failure to draw inferences in their favour in certain respects, corresponding, it is said, to inferences which he did draw in favour of the First Claimant.
The relevant facts
I must first introduce the various relevant undertakings. For the most part I will do so in historical sequence.
Signor Giuseppe Cipriani the elder (grandfather of the Second Defendant), to whom I will refer as Giuseppe Senior, opened a bar in Venice called Harry's Bar. The idea had been suggested to him by an American, Harry Pickering, who had borrowed some money from Giuseppe Senior. When he repaid it, with an additional sum by way of thanks, he proposed that the money be used to open a bar. Premises were found (part of those still used) and the bar was opened in May 1931. The name was taken from Mr Pickering's first name. (Giuseppe Senior's son's first name, Arrigo, was taken from that of Mr Pickering as well. I will refer to him as Arrigo. He is the father of the Second Defendant, Giuseppe.) Soon afterwards, Giuseppe Senior bought out Mr Pickering's interest, and he ran it as a sole trader. Arrigo took over the management of Harry's Bar in 1957. In 1960 it was extended to a second floor and became more of a restaurant than a bar. In 1972 Arrigo Cipriani SpA was established to operate Harry's Bar. In 1998 that company was absorbed by merger into Cipriani SpA.
Associated with Harry's Bar is a logo consisting of a stylised drawing of a bar tender pouring out three cocktails.
Harry's Bar has, or had, two related ventures in Venice, which it is convenient to mention now, out of chronological sequence. On the Giudecca there is another bar and restaurant called Harry's Dolci, opened by Arrigo in 1983. Between 1986 and 2003, Arrigo also operated a café at the Palazzo Grassi, as an adjunct to the exhibitions put on there. It was known as Caffetteria di Palazzo Grassi dell’ Harry's Bar, or just as the Caffetteria di Palazzo Grassi.
In 1938 Giuseppe Senior bought an old inn on the island of Torcello, and renamed it Locanda Cipriani. After the war it was developed into a hotel with six rooms and a restaurant with a garden. It became popular and well-known. In 1972 Giuseppe Senior and Arrigo sold Locanda Cipriani to a company (SFIP) which belonged to Arrigo's sister Carla and her husband Giovanni Brass. Although, therefore, members of the Cipriani family are still involved, its ownership is quite distinct from that of Harry's Bar.
In 1953 Giuseppe Senior bought some undeveloped land on the Giudecca in Venice. He planned to open a hotel there and, some time later, he mentioned this plan to Lord Iveagh, who was dining at Harry's Bar. This led to the First Claimant being set up, then called Hotel Cipriani SpA, in 1956, owned at that time as to 40% by Giuseppe Senior and 60% by Pattondale Ltd, a nominee for the Guinness family. The hotel opened for business in March 1958. Giuseppe Senior managed it until 1959 when he became chairman. Arrigo was a director from 1958 to 1967. The share capital was increased from time to time as a result of which, by 1966, Giuseppe Senior's holding was 13.33%. Pattondale Ltd's holding was transferred to another company, Stondon Ondale and Patmore Company Ltd (SOP). In 1967 Giuseppe Senior sold his shareholding to SOP by an agreement which I will mention later.
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 was redeveloped and opened under the name Hotel Villa Cipriani in 1962. In 1975 the Guinness family sold it to the CIGA hotel group, and later it was sold to the Starwood hotel group who now run it as part of the Sheraton chain.
Arrigo started a Cipriani catering business which is or has been active in and around Venice since the late 1980's. He also set up a food production business under the name Cipriani in the mid 1980's,...
To continue reading
Request your trial
-
WHG (International) Ltd (A Gibraltar Company) and Others v 32 Red Plc (A Gibraltar Company)
...and application of the equivalent provision in Article 52(1)(b) of the CTMR has recently been given by Arnold J in Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd [2009] EWHC 3032 (Ch), [2009] R.P.C. 9 at paragraphs 165 to 190 and by the ECJ in the Lindt case ( Case C-529/07 Chocoladef......
-
McCambridge Ltd v Joseph Brennan Bakeries
... ... [2012] EWCA Civ 1419, [2013] IP & T 577; Hotel Cipriani SLR v Cipriani (Grosvenor Street) Ltd ... ...
-
Starbucks (HK) Ltd and Others v British Sky Broadcasting Group Plc and Others
...of the kind that were considered in the decision of the Court of Appeal in Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2010] EWCA Civ. 110, [2010] R.P.C. 15 The second way in which goodwill is said to have arisen is pleaded in the Particulars of Claim as follows: "10. Between Ju......
-
Eli Lilly and Company Ltd v Human Genome Sciences Inc. (No 2)
...sign and by the sign for which registration is sought." 36. In Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd [2009] EWCA 110 Civ, [2010] RPC 16 at [52] Lloyd LJ, with whom Jacob and Stanley Burnton LJJ agreed, summarised the guidance of the Court of Justice in Lindt as follows: "Att......
-
The NOW TV case: Mere reputation of international brand is not enough to protect unregistered trade mark in the UK
...of America v Sheraton Motels Ltd ([1964] RPC 202) [3] Hotel Cipriani SRL and others v Cipriani (Grosvenor Street) Limited and others ([2010] EWCA Civ 110)...
-
Case Note
...formulation has received some tacit (if non-committal) endorsement from Lloyd LJ in Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd[2010] RPC 16 at [117]–[118], as well as Sundaresh Menon CJ in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide Inc[2014] 1 SLR 911......
-
Intellectual Property Law
...their bookings for the claimant's services from within the jurisdiction: see, eg, Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd[2010] RPC 16 at [124]. The Court of Appeal did not find it necessary to make a determination on this issue because the Opponent's claim failed on a more fun......